LexiMed Pty Ltd v Lex Medicus Pty Ltd

[2013] ATMO 64

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by LexiMed Pty Ltd to registration of trade mark application 1359242 (35, 44, 45) - LEX MEDICUS - filed in the name of Lex Medicus Pty Ltd.

Delegate:	Alison Windsor
Representation:	Opponent:  Shannon Brown of IP Wealth Pty Ltd Applicant:  Benjamin Fitzpatrick of counsel, instructed by Davies Collision Cave patent and trade mark attorneys
Decision:	2013 ATMO 64 Section 52 opposition:  Grounds pursued under sections 44 and 60 – neither ground established – trade mark to proceed to registration

Background

1. Lex Medicus Pty Ltd (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the application appear below:

Application number:           1359242

Filed on:  3 May 2010

Goods/services:  Class 35:  Document management services for e discovery.

Class 44:  Preparation of reports on medical conduct for medical negligence cases.

Class 45:  Legal services; legal services being provision of a register of medical experts for providing expert opinion in legal cases; legal document management services for e discovery; legal document management services; legal services in relation to provision of expert opinions; providing expert opinions in relation to legal matters; providing expert opinions and reports in medical negligence cases; information, advisory and consultancy services in relation to all of the aforementioned

Trade Mark:  LEX MEDICUS (‘the Trade Mark’)

1. The application was examined as required by section 31 of the Act and in due course was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks on 17 February 2011.

2. Following the grant of an extension of time for the purpose, on 18 May 2011 LexiMed Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to registration of the Trade Mark.

3. The parties duly served and filed evidence in support, in answer and in reply pursuant to the Trade Mark Regulations 1995 (’the Regulations’), the evidentiary process being completed in early January 2013.  On 11 February 2013 the Opponent also filed and served written submissions in support of its case. 

4. On 22 February 2013 the Applicant filed a request for a hearing which was in due course set down to take place in Melbourne on 19 July 2013.  The Opponent, which had originally not intended to appear, advised that it would be represented on the day, and both parties then provided detailed written submissions which they supported orally on the day. 

5. As a delegate of the Registrar of Trade Marks I heard the parties at the appointed place and time.  The Opponent was represented by Ms Shannon Brown, trade mark consultant, of IP Wealth Pty Ltd.  Ms Brown was accompanied by Mr Paul Horsburgh, also of IP Wealth Pty Ltd, and Ms Debra McCosker of the Opponent.  The Applicant was represented by Mr Benjamin Fitzpatrick of counsel, instructed by Mr Ian Drew, trade mark attorney, of Davies Collison Cave patent and trade mark attorneys.

Evidence provided

1. The evidence served and filed for these proceedings consists of the following statutory declarations:

Evidence in support
Evidence in answer
Evidence in reply

• Cassandra Voller, an employee of IP Wealth Pty Ltd, made 4 May 2012

• Thomas Kossman, director of the Applicant, made 20 July 2012 and with exhibits TK-1 to TK-9

• Joint declaration of Debra McCosker and David Morgan, directors of the Opponent, made 19 December 2012 and with Exhibits LM-1 to LM-6.

Grounds of opposition and onus

1. The Notice was couched in the broadest possible terms. However, at the hearing the Opponent pursued only two grounds of opposition, namely the grounds relevant to sections 44 and 60 of the Act. I regard the remainder of the grounds set out in the Notice as having been abandoned.

2. The onus is on the Opponent to establish a ground of opposition on the balance of probabilities.[1]  The date at which the ground of opposition must be established is the date of filing of the Trade Mark (‘the relevant date’).[2]

   [1] See, for example, Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   [2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Discussion and reasons

1. In respect of both of the grounds upon which the Opponent relies it has nominated a registered trade mark, details of which are shown here:

Registration no:       1312967

Owner:                     Leximed Property Pty Ltd[3]
Priority date:            3 August 2009

Services:Class 41:  Medical education services; health education; legal education services; occupational health and safety services (education and training services); providing facilities for educational purposes; charitable services, namely education and training; conducting of educational courses; design of educational courses, examinations and qualifications; dissemination of educational material; publication of educational materials; provision of an online educational forum; educational research; career information and advisory services (educational and training advice); employment training; career counselling (education or training advice); lifestyle counselling and consultancy (training); coaching (education and training); photographic reporting; event management services (organization of educational, entertainment, sporting or cultural events); providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 44:  Medical services; consultancy and advisory services in relation to medical services; consultancy and advisory services relating to medical problems; conducting of medical examinations; medical analysis services; medical diagnostic services (testing and analysis); medical examination of individuals; medical health assessment services; psychological testing for medical purposes; psychological examination; behavioural analysis for medical purposes; preparation of psychological profiles for medical purposes; medical advisory services; medical counselling; lifestyle counselling (medical); compilation of medical reports; preparation of reports relating to medical matters; services for the preparation of medical reports; medical information retrieval services; medical screening; arranging of medical treatment; provision of medical facilities; medical clinics; personal care services (medical nursing, health, hygiene and beauty care); charitable services, namely providing medical services; provision of medical information; providing information, including by electronic means and via a global computer network, about all of the aforesaid services
Class 45:  Legal mediation services; mediation; mediation services (arbitration services); dispute and conflict resolution (arbitration services); legal services; legal advice; legal consultancy services; legal enquiry services; legal advocacy services; legal investigation services; compilation of legal information; legal information research services; information services relating to legal matters; provision of legal information; legal support services; expert witness services; accident investigation; accident reporting; consultancy services relating to private investigations; personal background investigations; employment screening services (security checking); security assessment of risks; consultancy services relating to security; administration services (legal) for businesses; personal care services (non-medical nursing assistance); charitable services, namely mentoring (personal or spiritual); litigation services; providing information, including by electronic means and via a global computer network, about all of the aforesaid services.

Trade Mark:             LEXIMED (‘the Opponent’s trade mark’)[4]

[3] The registration was formerly in the name of Debra McCosker who assigned it to the current owner in the second half of 2012. 

[4] The relationship between the Opponent and the current owner of this trade mark has not been explained.  For the purposes of this decision, I will refer to it as the Opponent’s trade mark as it is the trade mark upon which the Opponent is relying for both of the grounds pursued at the hearing. 

1. Much of the Opponent’s evidence and its submissions go to the contention that the Trade Mark and the Opponent’s trade mark are in conflict because of their similar appearances. It is therefore appropriate for me to begin by considering the section 44 ground of opposition.

Section 44 – identical etc trade marks

1. Both the Trade Mark and the Opponent’s trade mark are on the Register in respect only of services. Section 44 thus relevantly provides: [5]

   [5] The Applicant has not used its trade mark in Australia as yet so the provisions of subsection 44(3) and 44(4) do not apply and I have not reproduced them here.  Kossman declaration, paragraph 10:  “My company is not presently trading under the mark LEX MEDICUS in Australia as I am awaiting the outcome of the opposition proceedings against application Nol. 1359242 before commencing use”.

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if: 

   (a) it is substantially identical with, or deceptively similar to: 

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(2).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. It is clear that the Opponent’s trade mark has the earlier priority date.  It is also clear from the services nominated for each trade mark that both parties operate in the same fields and that the relevant trade marks are used (or are to be used in the Applicant’s case) for a range of services which incorporate many of the same and similar services.  There are however some differences between the services which are worthy of further exploration.

3. In respect of the services it intends to offer, the Applicant submitted the following:

   The Designated Services fall into 2 groups.  The first group of services relate to the current services provided by the applicant, the provision of medical opinions for the purpose of medical negligence litigation.

   Class 44:  Preparation of reports on medical conduct for medical negligence cases

   Class 45:  Legal services; legal services being provision of a register of medical experts for providing expert opinion in legal cases; legal services in relation to provision of expert opinions; providing expert opinions in relation to legal matters; providing expert opinions and reports in medical negligence cases; information, advisory and consultancy services in relation to all of the aforementioned.

   The second group of services relate to the current area of expansion of the services offered by Lex Medicus GMBH,[6] electronic document management systems.

   Class 35:  document management services for e discovery

   Class 45:  legal document management services for e discovery; legal document management services

   Both these groups of services are specialised and expensive services, offered not to the public, but to a highly specialised market made up of lawyers and law firms (Kossman [10]).

   [6] Lex Medicus GmbH is described in the Kossman declaration (paragraph 16) as the German arm of Mr Kossman’s business.

4. Section 14 defines ‘similar services’ as follows:

   For the purposes of this Act, services are similar to other services:

   (a)    if they are the same as the other services; or

   (b)    if they are of the same description as that of the other services.

5. While the class 45 services shown in the second group of services above arguably fall under the umbrella of the broad claim ‘legal services’, the services in class 35 are not as clear.  These services are ‘document management services for e discovery’.  The term ‘discovery’ is defined in the Macquarie Dictionary[7] specifically in relation to legal matters as meaning ‘compulsory disclosure, as of facts or documents’.  Butterworths Concise Australian Legal Dictionary[8] defines the term as meaning “a pre-trial procedure where a party to proceedings makes available for inspection all relevant documents to the other parties”.  I presume that the term ‘e discovery’ refers to the disclosure or the making available of information through electronic means, rather than in paper form.  The class 35 services thus refer to the provision of services for the management of these pieces of electronic information.  To my mind, these services will be closely related to services in class 45 such as ‘legal enquiry services’, ‘legal information research services’ as well as to ‘medical information retrieval services’ in class 44, all of which form part of the registered services of the Opponent’s trade mark.  I am satisfied that the services for which the Applicant has applied are all the same, similar or closely related to those of the Opponent’s trade mark.

   [7] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd.

   [8] Dr Peter E Nygh and Peter Butt (eds), 1997

6. In respect of the comparison of the trade marks themselves, the Opponent submitted that its trade mark is both substantially identical with and deceptively similar to the Trade Mark, on the basis that both of the trade marks included the elements LEX and MED.  It submitted that on a side by side comparison the two trade marks were substantially identical because of their ‘near identical resemblance’.  It further submitted that since both trade marks share the common essential features of the word elements LEX and MED that ‘it is evident that the Applicant’s Trade Mark is wholly encompassed within the Opponent’s Trade Mark, namely LEXIMED, or contains common essential features’.  It said further that the elements LEX and MED were distinct components of both of the trade mark under consideration and even with the ‘slight differences which exist in the Trade Marks, such additional features are not necessarily sufficient to alter the distinct commonalities between the Trade Marks’. 

7. The Opponent has quoted the generally accepted test for determining substantial identity which appears in the words of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia ) Ltd[9] (‘Shell’):

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court's own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co.[10] - FTN.18 Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody per Latham C.J.[11] and Ex parte O'Sullivan; Re Craig, per Jordan C.J. - FTN.22,[12] where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity … 

   [9] (1963) 109 CLR 407 at 414

   [10] (1951) 68 RPC 103 at 106

   [11] (1945) 70 CLR 100 at 114, 115

   [12] (1951) 68 RPC 103 at 106

8. The Trade Mark and the Opponent’s trade mark are to be compared side by side as is necessary to fulfill this particular test and are shown below:

   LEX MEDICUS  LEXIMED

   (the Trade Mark)  (the Opponent’s trade mark) 

9. I agree that both trade marks include the elements LEX and MED.  However, I do not agree that on a side by side comparison there is a ‘near identical resemblance’ nor that the ‘Applicant’s Trade Mark is wholly encompassed within the Opponent’s Trade Mark’.  As I said in Lion-Beer Wine and Spirits Pty v Michael Harvey:[13]

   I concede that each trade mark does indeed include a number of the same letters, but as is pointed out in the Applicant’s submissions, so do many other words.  A degree of congruence between the letters is simply insufficient to point to a real tangible danger of confusion occurring between the words when they are considered as wholes.

   [13] [2013] ATMO 06 at paragraph 29. The comment was made in respect of deceptive similarity but is equally appropriate for a consideration of the comparison for determining substantial identity.

10. Once the Trade Mark and the Opponent’s trade mark are side by side each is easily distinguishable from the other.  An obvious difference, of course, is that the Trade Mark consists of two words and the Opponent’s trade mark consists of one.  While there are some clear similarities between the two these do not result in an overall impression of resemblance.  Therefore I find that the Trade Mark and the Opponent’s trade mark are not substantially identical.

11. We then move on to a consideration of deceptive similarity, a term which is defined in the Act at section 10 as follows:

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

12. The relevant test again comes from Shell at 415:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co.  And in Australian Woollen Mills Ltd v. F. S. Walton & Co. Ltd. Dixon and McTiernan JJ.[14] said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same”. … When the Act speaks of marks being “deceptively similar” to the registered mark, it propounds, I think, the same test as in the former Act was expressed by the phrase “so nearly resembling it as to be likely to deceive”. The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

    [14] (1937) 58 CLR 641 at 658

1. Returning to the Opponent’s submissions in respect of the word elements LEX and MED, it is clear that the elements form prominent parts of both trade marks.  The Opponent’s trade mark is, as it has commented, an invented word.  It contains the Latin word ‘lex’ meaning ‘law’, or ‘the law’[15] and the element ‘med’, which can be seen as a reference to ‘medicine’ or ‘medical’.  The two elements are joined by the letter ‘i’ creating, as the Opponent says, a trade mark which is ‘strong, memorable, easy to pronounce and relevant’.[16]

   [15] See The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd.

   [16] McCosker/Morgan declaration, paragraph 8

2. On the other hand, the Trade Mark consists of the two word expression ‘Lex Medicus’.  The Latin word ‘medicus’ has a number of meanings including ‘doctor’ or ‘physician’, and often in modern usage, refers to ‘medicine’ or ‘medical’.  The meaning of the two word expression is transparent to anyone with a passing familiarity with Latin – ‘medical law’, ‘the law as it relates to medical matters’ or perhaps ‘the law as it relates to doctors (or physicians)’. 

3. The differences I have described between the trade marks do not immediately settle the question of whether deception or confusion would be likely to occur if the two trade marks were to operate in the same market at the same time.  The previous quote from Shell refers to the need to take into account ‘all the circumstances’ surrounding the operation of the trade marks within the relevant marketplace.

4. In that respect, the Opponent has submitted that both parties operate in a specialised field – that of the provision of advice, evidence and opinions in medico-legal matters.  This, the Opponent says, means that there is a higher likelihood of confusion between the trade marks because of the relatively small number of players in the specialised market.  The Applicant submitted an alternative view: that since the services offered by the parties were specialised and expensive, generally only dealt with by legal and medical experts and only entered into after much careful consideration, there would be little likelihood of confusion occurring amongst the relevant consumers. 

5. However, I note that both the Applicant and the Opponent have nominated within their service specifications the broad claim ‘legal services’.  Because of this, the following comments taken from Shanahan[17] are apposite:

   In assessing the risk of deception or confusion contemplated by s 44, the tribunal assumes that both trade marks will be used (in the words of Evershed J in the Smith Hayden case) in a "normal and fair manner" for all the goods or services covered by the registration or application in question. The statutory rights of use must be compared rather than the actual modes of use and indeed neither trade mark need have been in use at all.

   […]

   Similarly, not only the particular usage that is planned for the applicant's trade mark but all manners of use within the scope of the registration sought are relevant. Consideration must be given to the ordinary ways that a trade mark can be used in a commercial setting.

   [17] Shanahan’s Australian law of Trade Marks and Passing Off, 4^th edition, online version at [25.1020]

6. These comments refer to the concept of ‘notional use’. Despite both parties to this opposition stressing that use of their respective trade marks is in the specialist medico-legal field, both the Trade Mark and the Opponent’s trade mark have nominated within their service claims a very broad and unqualified claim for ‘legal services’. In considering section 44, it is the use to which the Applicant may put the Trade Mark which must be considered and that use, as the specification currently stands, covers all or any legal services from the drawing up of a simple Last Will and Testament to a complex case on any matter at all which is designed to be presented before the Full Bench of the High Court of Australia.  The likely market for the services is thus much wider than that proposed by either Applicant or Opponent and effectively amounts to any person in the Australian population who is likely to require the services of a lawyer for any purpose at all.

7. The remaining question to be answered is whether, in this extremely broad market place with its great variety of possible customers, there is a real tangible danger that the Applicant’s use of its trade mark would result in deception or confusion occurring.  Deception and confusion are not the same thing, as was pointed out by Lord Denning in Parker-Knoll Limited v Knoll International Limited:[18]

   “[T]o deceive” is one thing.  To “cause confusion” is another.  The difference is this:  When you deceive a man, you tell him a lie.  You make a false representation to him and thereby cause him to believe a thing to be true which is false.  You may not do it knowingly, or intentionally, but still you do it, and so you deceive him.  But you may cause confusion without telling him a lie at all, and without making any false representation to him.  You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

   [18] (1962) RPC 265 at 274

8. The Opponent has submitted that the Trade Mark is deceptively similar to the Opponent’s trade mark in look, sound and idea and, because the use and understanding of Latin has diminished in recent times, both trade marks are likely to be seen as invented words.  In support of this contention, the Opponent referred to the Erectiko[19] decision where Farwell J said:

   No doubt in the case of a fancy or invented word, a word which is not in use in the English language, the possibility of confusion is very much greater.  A fancy word is more easily carried in mind and is more easily carried in mind in connection with some particular goods and it may well be that in the case of a fancy word there is much more chance of confusion and therefore less evidence may be required to establish the probability of confusion in the case of a fancy word than in the case of a word in the English language. 

   [19] William Bailey (Birmingham) Ltd’s Application (1935) 52 RPC 136

9. The Opponent has stated that its trade mark is an invented word, made up from two elements – LEX and MED - joined by the letter ‘i’.  It is a single word of seven letters and one which arguably did not exist until such time as the Opponent invented it.  The Trade Mark consists of a two word expression which is one which may or may not be meaningful to the purchasing public.  The expression begins with the same three letter prefix as does the Opponent’s trade mark, but ends with a much longer word - it consists of ten letters in total plus an intervening space – LEX MEDICUS.  Even if both trade marks are to be seen as invented words, I consider that the very obvious differences between them, especially in the suffix of the Trade Mark, are unlikely to be ignored. 

10. The Opponent has referred to the observation of Sargant LJ in London Lubricants (1920) Ltd’s Application[20] in reference to:

    [the] tendency of persons using the English language to slur the termination of words … has the effect necessarily that the beginning of words is accentuated in comparison, and … the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

    [20] (1925) 42 RPC 264 at 279

11. However, I note that Shanahan, at [30.1550] points out that there is also published support for cases where the emphasis is placed on some other syllable; where the ending is not slurred; where the tendency is to slur some syllable other than the last or it is the latter part of the word that is the more unusual and distinctive.  I am satisfied that the Trade Mark fits into the final category as the word MEDICUS is both unusual and, if it is agreed that Latin will not be understood by the majority of players in the market, meaningless.  I thus find that there is no real tangible danger of deception or confusion between the two trade marks under consideration.

12. As a final point, I note that both parties in this matter have adopted trade marks incorporating the word LEX and the word element MED because of the relevance of those elements to the field in which both offer their services.  Stephen J observed in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[21]:

    There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of the like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action … The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe …

    [21] (1978 ) CLR 216

13. Despite the very general market in which the Applicant may choose to use the Trade Mark, I do not find that the Trade Mark and the Opponent’s trade mark are deceptively similar. The ground of opposition under the provisions of section 44 has not been established.

Section 60 – trade mark similar to trade mark that has acquired a reputation in Australia  

1. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: 

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note:  For priority date see section 12.

2. In considering the section 60 ground of opposition, there is no longer any requirement that the Trade Mark be even deceptively similar to the trade mark which has a demonstrated reputation. Instead, the focus of the provision is squarely upon the likelihood of public deception or confusion being generated by the Applicant’s use of the Trade Mark in the face of the reputation of the trade mark relied upon by the Opponent.

3. Reputation must be established as a question of fact.[22]  While it is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions.[23] 

   [22] Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302; 23 IPR 193 at 343 (FCR), 234 (IPR) (Full FC) (‘Conagra’).

   [23] McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 129 (‘McCormick’).

4. In McCormick Kenny J considered what might be intended by the word "reputation".  She had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in section 60, reputation is "the recognition of the [trade mark] by the public generally." Her Honour quoted the following words of Lockhart J in ConAgra:

   (R)eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

5. On the subject of reputation Kenny J also referred to the Hugo Boss[24] decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation.  The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has a very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.  

   [24] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423 at 426; [1999] ATMO 23.

6. The Opponent is relying on the trade mark detailed previously at paragraph 10 of this decision.  The Opponent submitted that this trade mark has developed a significant reputation in the relevant marketplace which it submits results partly from the fact that it operates in a highly specialised field which only includes a small number of service providers.  It submitted that as a result of this fact the reputation the Opponent has acquired is much higher than might be expected when compared with services offered in a more generalized field. 

7. The Opponent states that it chose the trade mark LEXIMED in 2007, filed for registration of its trade mark in 2009 and has ‘enjoyed exclusive rights to the trade mark since’.  The McCosker/Morgan declaration provides revenue and advertising/promotional expenditure for the financial years 2008/09 to 2011/12, but provides them as confidential figures which I will not detail here.  I am unable to make any assumptions about whether these figures are high or low as I have no information before me of the likely unit cost of services the Opponent provides.  While the Opponent has provided some examples of client invoices, all monetary information has been obliterated.  While the dollar values of the revenue would appear large if it had been earned in respect of cheap consumer goods, I am unable to tell whether these amounts add up to significant revenue in relation to the Opponent’s services and thus would point to the development of a reputation in the particular field in which the Opponent operates.

8. The declaration provides examples of advertisements which have been placed in a magazine named ‘Proctor’ which I found, via an internet search, is a magazine published by the Queensland Law Society.  Examples of newsletters and specialised information sheets on particular medical topics are also exhibited to the declaration.  All of these publications show the trade mark used in the following form:

1. However, it is not at all clear how widely these publications are distributed as the declaration states that they are distributed to the Opponent’s clients.  From this I understand that persons who already have dealings with the Opponent receive this information, and I am left in the dark as to just how widely the Opponent does promote its services and thus just how widely the services are likely to be known in the relevant marketplace.

2. However, as the Opponent has submitted, medico/legal services are specialised services, the market is relatively small and therefore it is much easier for a service provider to establish a reputation in the field. That said, however, I do not know just how many providers are likely to operate in the specialised field, and I cannot make any estimate of where the Opponent stands in respect of its market share of the available business. I consider that there is not sufficient information before me for me to be satisfied that the Opponent has the kind of reputation in its trade mark envisaged by the provisions of section 60. It has therefore not established the ground of opposition under that section of the Act.

Decision

1. As the Opponent has not established a ground of opposition, the opposition fails.  Application 1359242 may proceed to registration after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Applicant has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent, LexiMed Pty Ltd.

Alison Windsor
Hearing Officer
Trade Marks Hearings
19 August 2013