[3.7.4] CLOSELY RELATED GOODS OR SERVICES
As noted above in [3.7.3] above, a section 44 ground of opposition may also be upheld in circumstances in which one trade mark specification contains “goods” and the other contains “services” and such goods and services are found to be “closely related”.
The words “closely related” imply there is a form of relationship between the goods and services.(1) And because of the nature of this ‘close relationship’ confusion is likely to arise.(2)
The following general principles have been observed in assessing whether goods and services are “closely related”:
- Services are more likely to be “closely related” to goods where such services “necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods”.(3)
- “Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to those goods”.(4)
As with ‘similar goods’, in deciding whether goods and services are closely related 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 “closely related” goods and services can also change. Recent case law can therefore be of more assistance than older case law.
Some recent examples of goods and services which have been found to be “closely related” are:
- “Ceramic tiles for indoor and outdoor use” and “Wholesale and retail stores and wholesale and retail showrooms featuring …tiles”.(5)
- “Ceramic tiles for indoor and outdoor use” and “installation, maintenance and repair services of …tiles”.(6)
- “Vitamins” and “instruction, education and information services in relation to human health, nutrition and physical culture, diet, food and dietary supplements and pharmaceutical, medical and veterinary substances”.(7)