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lexvoco v incounsel case summary
overview

Both Lexvoco Pty Ltd and Lexoo Limited (a UK company), provide online client-matching platforms which allow businesses to easily source and compare quotes from a curated network of specialised commercial lawyers and boutique firms worldwide.

Lexoo serviced its first Australian client in August 2015, following which the Lexoo platform was launched in Australia in late 2016.  In 2016, Lexoo also applied to register the trade mark “LEXOO”.

Lexvoco Pty Ltd owns two prior registered trade marks, being the word mark “LEXVOCO” and their associated logo, and provided evidence establishing its services were due to go live around December 2015.

decision

Lexvoco opposed Lexoo’s trade mark application with the key matter to be decided being whether the trade marks were substantially identical or deceptively similar.

The Delegate didn’t consider the trade marks were substantially identical as although the marks shared the prefix “LEX”, the suffixes were obviously different. In particular, the suffixes “-OO” and “-VOCO” have no obvious meaning in relation to the services.

The Delegate also didn’t consider the trade marks were deceptively similar due to:

  1. the services claimed, being legal services, are generally engaged in with caution and attention.
  2. the prefix “LEX” is Latin for “law”, and therefore often used in trade marks to denote a connection to legal services or the legal profession. It was therefore not a distinguishing element of the mark, although cannot be completely discounted due to its occurrence at the beginning of each mark;
  3. the suffixes “-OO” and “-VOCO” have a different number of syllables and do not denote the services offered; and
  4. the caution that will be exerted by those using the services under either mark diminishes the risk of the marks being confused due to imperfect recollection. Further, no instances of actual confusion were provided.

However, it was interesting that the delegate also noted that where a marketplace for services [or products] is not occupied by many traders, similarities between trade marks might be perceived to indicate the service providers are connected.

key takeaways
  • Services that are engaged with a degree of caution and attention will affect whether two marks will be deemed to be similar.
  • Where the marketplace is not occupied by many traders offering similar services, similarities between trade marks might be perceived to indicate a connection .
  • “Invented” trade marks are susceptible to imperfect recollection, which may contribute to deceptive similarity.