Similarity of goods and services

Similarity of goods and services is the comparison between the goods or services covered by the earlier trade mark and those covered by the contested sign. It governs the ordinary protection of the trade mark, since Article L. 713-2 of the French Intellectual Property Code and Article 9 of Regulation (EU) 2017/1001 catch the use of a similar sign only for identical or similar goods or services. It is the expression of the principle of speciality and one of the factors of likelihood of confusion.

The criteria of comparison

The Court of Justice of the European Union holds that the similarity of goods must be assessed by taking into account all the relevant factors characterising the relationship between them, including their nature, their intended purpose, their method of use and whether they are in competition with each other or complementary. Office practice adds the distribution channels, the target public and the usual origin, that is to say whether the public expects the goods to be made by the same undertaking. Goods are complementary where there is a close connection between them, in that one is indispensable or important for the use of the other, so that the public may think they come from the same undertaking. Similarity between goods and services, for instance between clothing and retail services for clothing, is accepted where these criteria are met.

The scope of specifications and classes

The comparison concerns the goods as designated in the registrations, and not the goods actually marketed, except in infringement matters. A broad term covers the more specific goods it contains, so that the goods are held identical as soon as the contested term is included in the earlier term, or vice versa. The Nice Classification has no bearing on the assessment, as Article 33 of Regulation (EU) 2017/1001 expressly states: goods in the same class may be dissimilar, and goods in different classes may be similar. Where the earlier trade mark has been registered for more than five years, the comparison covers only the goods for which genuine use has been proved.

Degrees of similarity and how they combine

The analysis results in a degree of similarity, low, average or high, or in identity, or else in a finding of dissimilarity that ends the examination of likelihood of confusion, however close the signs may be. That degree is then combined with the similarity of the signs and the distinctive character of the earlier trade mark under the principle of interdependence. Only a trade mark with a reputation can cross the line into dissimilar goods, under the conditions specific to its extended protection.

Key points

Goods and services are similar where their nature, intended purpose, use, competing or complementary character and distribution channels lead the public to attribute a common origin to them. Nice classes do not matter, only the specifications do. In any analysis, start from the registered specifications, limit the earlier trade mark to the goods for which use has been proved, and reach a degree of similarity before moving on to the signs.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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