6. Similarity of the goods or services

When contemplating raising a citation under section 25 of the Act, the examiner must consider whether the specification of the cited mark or well known mark covers the same or similar goods or services as the specification of the application under examination.

There is no precise definition of what constitutes “similar” goods or services. Whether the goods or services of the potential citation are similar to the goods or services of the application under examination is a question of fact, to be determined on a case by case basis. The approach to take is a practical one, looking at the respective goods or services from a business and commercial point of view.³⁹

It is important to note that the classification of the goods or services is not conclusive. This is because similar goods and services may be classified in different classes (for example, sports drinks may be classified in class 5 or class 32), while dissimilar goods or services may fall within the same class (for example, music CDs and fire extinguishers are both classified in class 9).

In Jellinek’s Application (1946) 63 RPC 59 at 70, Romer J proposed a three-fold test when assessing whether goods and services are similar to other goods and services, namely the nature and composition of the goods, the respective uses of the goods, and the trade channels through which the goods are bought and sold. No one factor was considered conclusive and it was not considered necessary for all three factors to apply.⁴⁰

Further considerations were proposed in John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372, where this passage from the decision of the British Assistant Comptroller was cited:

In the Treat case, ⁴¹ Jacob J proposed the following general guidelines, which he described as “an elaboration of the old judicial test” that “seeks to take account of present day marketing methods”:⁴²

1. The respective uses of the respective goods or services;
2. The respective users of the respective goods or services;
3. The physical nature of the goods or acts of service;
4. The respective trade channels through which the goods or services reach the market;
5. In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
6. The extent to which the respective goods or services are competitive. This enquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.

Jacob J went on to note that goods could be similar to services.⁴³

The European Court of Justice has commented that:⁴⁴

When considering whether goods or services are “similar” to other goods or services, the following questions may be helpful:

• How will the goods or services be used? What is their purpose? If the goods or services are not identical but could be used together, or at the same time, or in the same way, or to achieve the same purpose, the public may see them as related and therefore assume that they originate from the same entity.
• How likely is it that the same entity would produce or provide the goods or services?
• Would the goods or services usually be provided or sold in the same types of outlets?
• In the case of self-serve consumer items, would the goods usually be found in the same place in the retail outlet, or on the same shelves?
• Would the goods and/or services usually be provided to the same class or classes of customer?
• How similar are the lines of business of the respective traders?
• How broad are the respective specifications of goods/services? If a trader offers a very narrow, specialised range of goods or services, there is less likelihood that consumers would expect that trader to produce or provide different goods or services. Alternatively, if a trader offers a very wide range of goods or services, consumers may associate almost any goods or services with that trader.
• How expensive are the goods or services? Consumers are likely to pay more attention when selecting expensive items than when selecting inexpensive ones. There may therefore be less likelihood of deception or confusion in relation to expensive goods or services.⁴⁵
• Are the goods or services in competition with each other?

Footnotes

³⁹ Gutta-Percha & Rubber Manufacturing Co. (Toronto) Ltd’s Appn (1909) 26 RPC 84 (Ch.D.); (1909) RPC 428 (C.A.)

⁴⁰ Floradix Trade Mark [1974] RPC 583

⁴¹ British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

⁴² Ibid, at 296-297

⁴³ Ibid, at 297: “I do not see any reason in principle why, in some cases, goods should not be similar to services (a service of repair might well be similar to the goods repaired, for instance).”

⁴⁴ Canon Kabushiki Kaisha v MGM Inc. [1999] RPC 117 at 133.

⁴⁵ Susy Frankel and Geoff McLay, Intellectual Property in New Zealand, LexisNexis Butterworths, 2002, at page 460