Lexvoco Pty Ltd v InCounsel Pty Ltd [2019] ATMO 83

On 30 May 2019, the Australian Trade Marks Office handed down its decision regarding opposition of the Trade Mark LEXOO belonging to our client, InCounsel Pty Ltd. Lexoo (now InCounsel) operates an innovative legal client-matching platform which essentially allows businesses to easily source and compare quotes from a curated network of specialised commercial lawyers and boutique firms.

The Opponent, Lexvoco, operates a similar platform and is the owner of two prior registered Trade Marks: the word mark LEXVOCO and their logo:

The decision was handed down in our client’s favour and all three of the Opponent’s grounds under sections 44, 58A and 43 of the Trade Marks Act 1995 were dismissed.

The decision provides a useful analysis of:

comparison of Trade Marks which incorporate a common prefix associated with professional industries, especially the legal profession;
how a connotation must arise for a Trade Mark to deceive or cause confusion.
The key statements by Hearing Officer Iain Thompson are summarised below:

Section 44: Are the Trade Marks Deceptively Similar?

LEXOO v LEXVOCO: Trade Marks not deceptively similar

Hearing Officer Thompson held that LEXOO and LEXVOCO were NOT deceptively similar Trade Marks (paragraph 33)

Some of the factors influencing that assessment were that:

Legal services are usually engaged with a degree of caution and attention;
The target market for the services are legal and other professionals who are trained to pay attention to detail and act with caution and attention;
The prefix “Lex-” is the Latin for “law” and is often used in Trade Marks to denote a connection to the legal profession – accordingly the prefix is not of prime importance as a distinguishing element of the Trade Marks and may be subject to some discount when making the comparison;
The suffixes “-OO” and “-VOCO” have a different number of syllables;
The suffixes “-OO” and “-VOCO” share no immediately apparent denotation in relation to the services and, accordingly, no associative similarity in meaning;
Whatever prospects there are of the Trade Marks being imperfectly remembered for each other may be diminished by the caution and attention with which lawyers and other professionals habitually attend to their affairs; and
The Trade Marks are both in use and Opponent did not provide any instances of actual confusion between the Trade Mark and the Opponent’s Registration. Further, if such confusion did exist, it would be uncertain whether that may have arisen through Lexoo UK’s prior use of the Trade Mark in Australia.
Section 43: Is LEXOO Likely to Deceive or Cause Confusion due to some connotation of the Trade Mark

The Opponent argued that use of the Trade Mark LEXOO was likely to result in confusion due to the similarity with the Opponent’s business name LEXVOCO, since both operators were engaged in a similar business.

Hearing Officer Thompson held that in order for this provision to apply, the connotation of the mark must be inherent within the Trade Mark. Therefore it was not relevant to compare the Trade Marks LEXOO and LEXVOCO Trade Marks or consider the Opponent’s reputation in determining this ground.