[3.7.3] SIMILAR GOODS OR SERVICES
In order for a section 44 ground of opposition to be upheld the trade mark application must relate to goods or services that are either similar goods or services or closely related goods or services to those found in the conflicting registration.
If the specification in both the trade mark application and registration relates to “goods” then such goods must be “similar goods”. The same applies to “similar services” if both specifications relate to services. On the other hand if one specification contains “goods” and the other contains “services” then the test will be whether the goods and services are “closely related” (See [3.7.4] below).
In relation the former concept of “similar goods” or “similar services” the test involves looking at:
(1). The nature of the goods or services;
(2). The uses of the goods or services; and
(3). The trade channels through which the goods or services are bought and sold.
No one factor is determinative and all should be given weight.
As illustrated by the Full Court of the High Court’s adoption of Romer J’s comments in Jellinek’s Case in Southern Cross Refrigerating Co v. Toowoomba Foundry Pty Ltd(1)assessing the factors may involve looking at the nature and origin of the goods or services, their origin, their purpose, whether the goods or services are produced by the same manufacturer or service provider or distributed by the same wholesale houses or service means, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged to their manufacture, distribution or provision they are regarded as belonging to the same trade.(2)
In applying this test although prior decisions can be highly relevant and encourage consistency it must be noted that the nature of trade changes over time. Hence what are “similar goods” and “similar services” can also change. Recent case law can therefore be of more assistance than older case law.
Some recent examples of goods which have been found to be “similar goods” are:
- “Swimwear” and “Brassiers, foundation garments and related ladies’ wearing apparel”.(3)
- “Ceramic tiles for indoor and outdoor use” and “Panels for floors, floor coverings not in the nature of tiles, wall cladding, flooring not in the nature of tiles, and ceilings; non-metallic covers for use with floors and parts thereof not in the nature of tiles; profiles and floor skirting boards; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls”.(4)
Some recent examples of services which have been found to be “similar services” are:
- “Data systemization and collection in computer data banks; computerized file management, all the services mentioned above excluding retail sale or on-line retail sale services in connection with jewelry or similar goods” and “providing searchable online advertising directories for [wholesale and retail distribution services of a wide range of goods]”.(5)
- “Transmission of television and interactive audio and video services; broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable” and “operating search engines; providing search engines for the Internet”.(6)