Lex Medicus has successfully defended its Australian trade mark application for the mark Lex Medicus against a trade mark opposition filed by medico-legal consulting firm Leximed.

Take Home Points

  • The trade marks Lex Medicus and Leximed are not deceptively similar.
  • To establish a trade mark has a reputation, more than mere sales revenue figures and examples of promotion are required. The Trade Marks Office will look for evidence of volume of sales, circulation of promotional material, the nature and size of the relevant market and market share. This is particularly important where the goods or services are offered in a highly specialised market.

The Lex Medicus Trade Mark Application

On 3 May 2010, Lex Medicus filed an application for the trade mark Lex Medicus which covers, broadly, document management services for e discovery in class 35, preparation of medical conduct reports for medical negligence cases in class 44 and a range of legal services in class 45.

The application was opposed by Leximed. Davies Collison Cave represented Lex Medicus in defending the opposition.

Leximed pursued grounds of opposition under sections 44 and 60 of the Trade Marks Act 1995.

Leximed's Section 44 Arguments

This ground of opposition applies where there is an earlier substantially identical or deceptively similar mark which covers identical or similar goods/services.

Under this ground, Leximed relied on its earlier registration No. 1312967 for the mark Leximed which covers a range of educational services in class 41, various medical related services including the preparation of reports on medical matters in class 44 and various legal services in class 45

The Delegate found the services covered by the respective trade marks were either the same, similar or closely related. Accordingly, the critical issue was whether the marks Leximed and Lex Medicus are likely to be confused by the relevant consumer.

Are Leximed and Lex Medicus substantially identical or deceptively similar?

Leximed's attorneys argued that the two trade marks are substantially identical or at least deceptively similar.

In relation to substantial identity, the Delegate did not agree with Leximed, concluding that there was neither a near identical resemblance and nor was the Lex Medicus trade mark encompassed by Leximed's trade mark.

The Delegate then considered whether the marks are deceptively similar. The Delegate firstly noted that "lex" is Latin for "law" and "medicus" is Latin for "doctor", "physician", "medicine" or "medical". The Delegate noted the differences between the marks commenting that Leximed is effectively an invented word, whereas Lex Medicus consists of two words carrying the meaning "medical law", "the law as it relates to medical matters" or perhaps "the law as it relates to doctors".

Relevantly, the parties had both submitted that they operate in the highly specialised field of providing medical advice, evidence and opinions in medical negligence cases. Leximed asserted that this increased the likelihood of confusion as there is only a small number of traders in the market. By contrast, Lex Medicus argued that such services are only acquired after careful consideration and, therefore, there would be little likelihood of confusion.

However, the Delegate noted that both Lex Medicus and Leximed had nominated all legal services against their respective application/registration. Applying the principle of notional use, the Delegate concluded that the relevant market is not as specialised and narrow as the parties had suggested and then assessed whether there is a real and tangible danger of confusion arising in the wider market for legal services.

After weighing the similarities and differences of the marks, the Delegate concluded that the differences between the marks are "very obvious", in particular the suffix of the mark Lex Medicus. In this regard, the Delegate considered the submission of Leximed that consumers have a tendency to slur the end of words as set out by Sargant LJ in London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279. She concluded, however, that in respect of the word "medicus", it is unlikely that the suffix would be slurred and, accordingly, there is no real tangible danger of deception or confusion between the respective parties' marks.

Finally, the Delegate considered the relevance of the common usage of the words "lex" and "med" in the relevant market and, applying the principle set out in Hornsby Building Information Centre Pty Ltd and Sydney Building Information Centre Ltd (1978) CLR 216, concluded that the marks were not deceptively similar.

Leximed's Section 60 Arguments

The Delegate then turned to the ground of opposition under section 60. Under this ground of opposition, Leximed was required to show that its trade mark Leximed has a reputation and that owing to that reputation the use of the mark Lex Medicus would be likely to deceive or cause confusion.

Had Leximed developed a reputation in its mark?

Leximed had submitted that its use of the Leximed mark since 2007 had led to the Leximed mark developing a substantial reputation in the relevant market. To demonstrate that reputation, Leximed provided confidential revenue and promotional expenditure figures.

The Delegate concluded that she was unable to draw any conclusions in relation to whether the figures are high or low as no information has been provided as to the likely unit cost in relation to the services and all monetary information had been obliterated from the copy invoices provided in Leximed's evidence.

Moreover, the Delegate noted that the examples of promotion of the Leximed mark always showed a composite mark and no information was given in relation to the extent of circulation of those promotional materials. Finally, the Delegate highlighted that Leximed had submitted that the medico/legal services sector in which Leximed operates is relatively small, but noted that no information had been provided to identify the number of traders in the specialist market and, therefore, it was not possible to assess the market share enjoyed by Leximed and the extent of the reputation of its trade mark Leximed.

Accordingly, the Delegate concluded that Leximed's evidence did not show that the mark Leximed had a reputation and the section 60 ground was not made out.

Leximed's Trade Mark Opposition Fails

As Leximed had not succeeded on either of its grounds of opposition against the Lex Medicus mark, the trade mark opposition failed and the Delegate held that the Lex Medicus mark should proceed to registration.