First Education Pty Ltd v First Education IP Pty Ltd

This matter concerned an opposition filed by First Education Pty Ltd (the Opponent) against the application for registration of a trade mark by First Education IP Pty Ltd (the Applicant). The Opponent lodged a Statement of Grounds and Particulars alleging various grounds for opposition under the *Trade Marks Act 1995* (Cth), including sections 42(b), 44, 58, 58A, 59, 60, and 62A. The proceedings were heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was to determine the extent to which any of the grounds on which the application was opposed had been established, and consequently, whether to refuse or register the Applicant's trade mark. The Opponent, an Australian company operating since 2010, provided evidence of its established business offering one-on-one tuition services under its registered trade mark and the words "FIRST EDUCATION," which it used in various stylisations across multiple platforms. The Opponent also presented evidence of confusion from the public, who mistakenly contacted them for services offered by the Applicant in a different geographical location.

The delegate found that the Opponent had successfully established the ground of opposition under section 44 of the *Trade Marks Act 1995* (Cth). This finding was based on the similarity between the parties' trade marks, specifically the shared "FIRST EDUCATION" element, and the evidence of actual confusion experienced by the Opponent due to the Applicant's proposed registration.

Accordingly, the delegate refused to register the Applicant's trade mark. The refusal was to be recorded one month from the date of the decision, unless a notice of appeal was filed, in which case the refusal would be stayed pending the appeal's outcome. The Opponent was awarded costs against the Applicant.