Opposition by Lexvoco Pty Ltd to registration of trade mark application 1805782 (36, 42, 45) - LEXOO - filed in the name of InCounsel Pty Ltd

[2019] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by Lexvoco Pty Ltd to registration of trade mark application 1805782 (36, 42, 45) - LEXOO - filed in the name of InCounsel Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: Y Intellectual Property
Decision:	2019 ATMO 83 Trade Marks Act 1995 Section 52 opposition to registration; grounds under sections 44, 58A and 43. Section 44 – trade marks not deceptively similar – section 58A not relevant as no finding under subsection 44(4); section 43 – no deceptive connotation inherent within Trade Mark. Grounds not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) InCounsel Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1805782

Priority Date:             28 October 2016

Services:Class 36: Brokerage services in relation to legal services; Providing services which allows legal practitioners to provide quotes for legal work requested by businesses and individuals via a website

Class 42: Providing temporary use of non-downloadable computer programmes; providing temporary use of non-downloadable software applications accessible via a web site; technical services for providing a website which allows users to submit their legal requirements and which matches those users with legal practitioners able to meet those requirements
Class 45: The provision of legal advice, consultation, information and research; the provision of legal services; the provision of commercial legal services for businesses; the provision of legal services relating to commercial contracts, leases, licences, company registration, shareholder agreements, company mergers and acquisitions, finance, tax, insurance, property, commercial liability, dispute resolution, litigation, intellectual property, immigration and employment
(‘the Services’)

Trade Mark:               LEXOO

(‘the Trade Mark’)

1. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 March 2017.

2. On 22 May 2017, Lexvoco Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 15 June 2017, by a Statement of Grounds and Particulars detailing grounds of opposition under sections 44, 58A and 43 of the Act.

3. On 4 August 2017, the Applicant filed a Notice of Intention to Defend.

4. On 10 November 2017, the Opponent filed its Evidence in Support being a declaration by Emily McCarthy, the Principal of the Opponent, made on 8 November 2017, with Exhibits A to K.

5. On 16 February 2018, the Applicant filed its Evidence in Answer, being a declaration by David Bushby, Managing Director of the Applicant, made on 16 February 2018, with Annexures DB-1 to DB-7.

6. On 13 March 2018, the Opponent filed its Evidence in Reply, being a further declaration by Emily McCarthy, made on 13 April 2018, with Annexures 1 to 11.

7. Both parties have been informed of their right to request a hearing or to make written submissions.  Neither party requested to be heard and the Applicant has filed written submissions by its attorneys Y Intellectual Property.

8. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and where section 44 of the Act specifies “the priority date” that is here the same as the filing date.

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Evidence

1. Both parties’ services are that of Internet-based “disruptive” labour-hire of lawyers.

2. In terms of the grounds specified in the Statement of Grounds and Particulars, and my reasoning in this matter, it is not necessary to discuss the evidence filed by the parties to any great extent.

3. It is sufficient to observe that Ms McCarthy’s first declaration establishes that the Opponent is the owner of the two trade marks registrations that appear hereunder:

Registration No:         1656834

Priority Date:             11 Nov 2014

Services:Class 35: Business recruitment consultancy; Personnel recruitment; Personnel recruitment agency services; Professional recruitment services; Recruitment consultancy services; Job agency services; Job placement services; Labour exchange services; Personnel management; Personnel management advice; Personnel management assistance; Personnel management consultancy; Personnel placement; Personnel resources management; Personnel selection (for others); Placement of permanent personnel; Placement of temporary personnel; Placement of staff

Class 45: Legal consultancy services; Legal enquiry services; Legal information services; Legal services

Trade Mark:               LEXVOCO

Registration No:         1663575

Priority Date:             17 December 2014

Services:Class 35: Business recruitment consultancy; Personnel recruitment; Personnel recruitment agency services; Professional recruitment services; Recruitment consultancy services; Personnel management; Personnel management advice; Personnel management assistance; Personnel management consultancy; Personnel resources management; Job agency services; Job placement services; Labour exchange services; Personnel placement; Personnel selection (for others); Placement of permanent personnel; Placement of temporary personnel; Placement of staff

Class 45: Legal consultancy services; Legal enquiry services; Legal information services; Legal services

Trade Mark:               

1. I will term the above “the Registered Trade Marks” and the services as “the Registered Services”.

2. Ms McCarthy attaches to her declaration tax invoice issued to McInnes Wilson Lawyers from a domain name registry dated 10 November 2014 concerning the registration of the domain However, the relationship between those lawyers and the Applicant is not stated and, in any event, registration of a domain name does not, per se, establish use of a trade mark.

3. Nevertheless, an email exchange between an Internet-based employment advertiser and the Opponent establishes that the services offered under the Opponent’s Trade Marks were due to “go live” on about 10 December 2015.

4. In his Evidence in Answer Mr Busby explains:

   Lexoo Limited (Lexoo UK) was incorporated as a UK limited company on 18 February 2014 and officially launched its services in June 2014. Lexoo UK was conceived as an online platform which would allow businesses to easily source and compare quotes from a curated network of specialised commercial lawyers and boutique firms, worldwide. The primary function of the Lexoo [UK] platform is to act as an intermediary between business clients with specific legal needs and specialised lawyers who have been vetted by Lexoo [UK] to fulfil those needs. Through Lexoo UK, business clients are able to post legal jobs, ranging from ad hoc work to longer term ongoing contracts and Lexoo [UK's] inhouse team will identify appropriately qualified lawyers who would be able to fulfil those requirements and obtain and transmit fixed fee quotes from those lawyers to undertake those jobs.

5. Mr Bushby asserts that Lexoo UK serviced its first Australian client with Australian lawyers on 3 August 2015 with reference to the trade mark LEXOO and that he:

   … discussed with the founders of Lexoo UK the possibility of launching the Lexoo platform in Australia and in late 2016, it was agreed that I would establish Lexoo in Australia with myself as Managing Director.

The result of this was the launch of the Applicant’s services under the Trade Mark on 13 March 2017.

1. The second declaration by Ms McCarthy does not, in the circumstances of this matter, add substantially to the above or need be taken into consideration in these proceedings for reasons which will become apparent.

Section 44

Statement of Ground and Particulars

1. In its Statement of Grounds and Particulars the Opponent details the trade mark registrations which appear at paragraph 13, above.

Section 44 - Principles

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   […]

   (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 services 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. Accordingly, to found its opposition under subsection 44(2) the Opponent must establish each of the following:

   ·     That the Opponent’s Trade Marks have earlier priority dates than that of the Trade Mark; and that,

   ·     The Services are similar services to the Registered Services; and that,

   ·     The Trade Mark is substantially identical or deceptively similar to the Registered Trade Marks.

3. The Opponent’s Trade Marks have earlier priority dates than that of the Trade Mark.  Further, because the term “similar services” includes “services of the same description”,[3] the Services and the Registered Services are obviously “similar services”; as the evidence filed by the parties establishes, the services of the parties are the same services.

   [3] Section 14 of the Act refers.

4. Accordingly, what remains to be decided is whether the Trade Mark might be substantially identical or deceptively similar to the Registered Trade Marks.  In this regard I will consider this question only in relation to the Opponent’s registration 1656834 LEXVOCO (‘the Opponent’s Registration’) as, if the opposition is established through the Opponent’s reliance upon that trade mark, consideration of any similarity of the Trade Mark to 1663575 LEXVOCO and Device is otiose.  And, if the opposition is not established in reliance on the Opponent’s Registration, analogous consideration in relation to 1663575 LEXVOCO and Device (which is less similar to the Trade Mark) would be redundant.

5. In discussing “substantial identity” in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said: [4]

   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. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [4] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

6. Although the Trade Mark and the Opponent’s Registration share the prefix “Lex-”, the suffixes are obviously different and immediately strike the eye as such.  Further, the suffixes “-OO” and “-VOCO” have no obvious meaning in relation to the services and thus considerations of the same ilk as those in PB Foods Ltd v Malanda Dairy Foods Ltd[5] do not apply.  A total impression of dissimilarity thus emerges from a comparison of the trade marks.

   [5] [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117.

7. It follows from the above discussion that I am not satisfied that the trade marks under consideration are substantially identical.

8. In regard to “deceptive similarity” Windeyer J continued in Shell at [13]:

   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 (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. 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” (1937) 58 CLR, at p 658.

9. Moreover, concerning the assessment of the likelihood of “deception or confusion”, in Woolworths at [50] French J stated:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

10. In regard to the quotation immediately above I note that in Re Smith Hayden and Co’s Application the question was also posited as being:[6]

    Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

    [6] (1946) 63 RPC 97 at 101.8

Section 44 - Consideration

1. In my considerations as to whether the Trade Mark and the Opponent’s Registration are deceptively similar, I consider the following factors to be relevant:

   ·    Legal services are usually engaged with a degree of caution and attention;

   ·    Those selecting and/or using the Services will most frequently be legal and other professionals who are trained to pay attention to detail and act with caution and attention;

   ·    The trade marks are likely to be marketed and provided in very similar ways;

   ·    The marketplace for the Services is not occupied by many traders offering the services and whatever similarities there are between the trade marks might be perceived to indicate a connection in the course of trade;

   ·    However, 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;[7]

   ·    The element “Lex” does, nonetheless, occur at the beginning of the parties’ trade marks where, when making comparisons, the emphasis must be put;[8]

   ·    The suffixes “-OO” and “-VOCO” have a different number of syllables;

   ·    The suffixes “-OO” and “-VOCO”[9] share no immediately apparent denotation in relation to the services and, accordingly, no associative similarity in meaning;

   ·    The trade marks LEXOO and LEXVOCO are both apparently “invented” trade marks which may be more susceptible to being imperfectly recalled;

   ·    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 has not provided 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 Lexo UK’s prior use of the Trade Mark in Australia.

   [7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536; The Coca- Cola Company of Canada Limited v Pepsi-Cola Company of Canada Limited (1942) 59 RPC 127.

   [8]. London Lubricants (1920) Limited's Application (1925) 42 RPC 264 at 279.

   [9] I note that the Latin word “voco” has the meaning in English of “to invite” or “to come together”.

1. In weighing the above factors, I am not satisfied that the Opponent has established that the trade marks of the parties are deceptively similar.

2. The Opponent has not established its opposition under section 44 of the Act.

3. As a result, section 44(4) does not fall for my consideration and, consequentially, it is further unnecessary to consider the ground of opposition under section 58A of the Act.

Section 43

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   Consumers of the services provided by [the Opponent] include solicitors, barristers, lawyers who are seeking job placement through [the Opponent] or employment with [the Opponent], and also businesses, companies, in-house lawyers and other consultants who seek legal services, business recruitment consultancy, legal information etc from [the Opponent].

   [The Applicant] solicits and engages the same contingency of consumers and customers.

   Actual and real confusion has occurred and is likely to continue to occur due to the close similarities between the business names and trade marks covering identical and similar services.

   Further both the Opponent and the Applicant market and promote their business and services in the same market and through the same avenues of media and marketing (i.e. Legal publications, LinkedIn, legal and lawyer conferences, seminars, blogs, articles and journals) and through promoting their businesses in like styles (i.e. both [the Opponent and the Applicant] are ‘new law’ providers and use disruption technology in the provision of their services).

Section 43 – Principles

1. Section 43 of the Act provides:

   43Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. I note that Gyles J in Pfizer Products Inc v Karam commented:[10]

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question ...

   [10] [2006] FCA 1663; (2006) 70 IPR 599, at [53].

3. In Winton Shire Council v Lomas Spender J said:[11]

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

   [11] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, at [19].

Section 43 – Consideration

1. In its Statement of Grounds and Particulars the Opponent explicitly relies on comparisons between the Trade Mark and the Registered Trade Marks and the reputations of those latter trade marks. These are not relevant considerations under section 43 of the Act (where the connotation must be inherent within the Trade Mark itself and not rely on such considerations).

2. Accordingly, the ground under section 43 is not established.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. As the Opponent has not established a ground of opposition, I decide to register the Trade Mark.

3. The application may then proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. The Applicant sought its costs in the event that it was successful in this matter. As the Applicant has been successful it is appropriate, in terms of section 221 of the Act, that I award costs against the Opponent at the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
30 May 2019