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

This matter concerned an opposition by Lexvoco Pty Ltd to the registration of the trade mark application 1805782, LEXOO, filed by InCounsel Pty Ltd. The opposition was brought under sections 55 and 60 of the *Trade Marks Act 1995* (Cth), relating to substantial identity or deceptive similarity to existing registered trade marks. The court was required to determine whether the applied-for trade mark LEXOO was substantially identical or deceptively similar to Lexvoco Pty Ltd's registered trade mark 1656834, LEXVOCO.

The court's primary task was to assess the degree of similarity between the two trade marks. In considering substantial identity, the court applied the principle that marks should be compared side by side, noting similarities and differences, and assessing their importance in light of the essential features of the registered mark and the overall impression of resemblance or dissimilarity. For deceptive similarity, the court adopted the approach of considering the impression left on the mind of a potential customer based on recollection, rather than a direct side-by-side comparison. The court noted that the suffixes "-OO" and "-VOCO" lacked inherent meaning in relation to the services offered, and therefore, the comparison focused on the visual and aural impact of the marks.

Ultimately, the court found that while both marks shared the prefix "Lex-", the suffixes were distinctly different and immediately noticeable. This led to a total impression of dissimilarity between the marks, meaning they were not substantially identical. Furthermore, the court concluded that the marks were not deceptively similar, as the differences would be retained in the memory of potential customers. Consequently, the opposition was not established.

The court ordered that the trade mark application proceed to registration, subject to any appeal. The applicant, InCounsel Pty Ltd, was awarded costs against the opponent, Lexvoco Pty Ltd, on the official scale.