Similarity of goods and services

THE MANUAL CONCERNING OPPOSITION

PART 2

CHAPTER 2

B. SIMILARITY OF GOODS AND

SERVICES

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Similarity of goods and services

INDEX

CHAPTER 2: LIKELIHOOD OF CONFUSION ................................................5

B. SIMILARITY OF GOODS AND SERVICES ........................................5

I. PRINCIPLES OF THE COURT AND THEIR APPLICATION IN

PRACTICE ......................................................................................5
1. The relation between similarity of goods and services and
likelihood of confusion .....................................................................5
1.1. Similarity of goods/services is a necessary condition of
likelihood of confusion...................................................................5
1.2. Similarity of goods/services to be interpreted in relation to
likelihood of confusion...................................................................6
1.3. Similarity of goods/services independent of similarity of signs or
distinctiveness of earlier mark .......................................................6
1.4. An “absolute” outer limit of similarity exists ...................................6
2. Assessment of the degree of similarity of the goods and services
in practice........................................................................................7
2.1. How to make the assessment of similarity of goods and services.7
2.2. Express and consistent answers required.....................................8
3. The Nice Classification and the similarity of goods/services ...........8

II. THE RELEVANT TERRITORY..........................................................10

III. SIMILARITY OF GOODS: FACTORS CONSIDERED ......................11

1. General principles .........................................................................11
2. The specific similarity factors applied to the comparison between
goods and goods...........................................................................13
2.1. Introduction: The distinction between factors may be difficult .....13
2.2. Nature .........................................................................................13
2.2.1. General considerations.......................................................13
2.2.2. The various features of goods defining their nature............15
2.2.3. Relation to other factors......................................................17
2.3. Purpose.......................................................................................17
2.3.1. Purpose defined..................................................................17
2.3.2. Determining the proper level of abstraction ........................18
2.3.3. Consequences of different purposes on the decision on
similarity..............................................................................18
2.3.4. The relation between nature and purpose in particular.......19
2.3.5. Relation to other factors......................................................19
2.4. Method of use .............................................................................20
2.4.1. Method of use defined ........................................................20
2.4.2. Determining the proper level of abstraction ........................20
2.4.3. Where “method of use” can be an important factor.............20

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Similarity of goods and services

2.5. How to properly distinguish the factors nature – purpose –

method of use .............................................................................21
2.6. Complementary Goods ...............................................................22
2.6.1. Principles ............................................................................22
2.6.2. General examples...............................................................23
2.6.3. Accessories ........................................................................24
2.6.4. Complementary character defined by consumer habits......25
2.6.5. Auxiliary or ancillary goods .................................................25
2.6.6. Sales promotion by manufacturers of goods or providers of
services ..............................................................................26
2.6.7. Relation to other factors......................................................26
2.7. Goods in competition ..................................................................26
2.8. Distribution channels, in particular placement in the same points
of sale .........................................................................................27
2.8.1. Major categories of distribution channels............................27
2.8.2. The relevance of the same distribution channels in general28
2.8.3. The relevance of the same sales outlets in particular .........28
2.8.4. Relation to other factors......................................................29
2.9. The relevant public, i.e. the actual and potential customers........29
2.9.1. Notion of customers............................................................29
2.9.2. Relation to other factors......................................................30
2.10. Usual origin of the goods/services ......................................31
2.10.1. Usual origin of goods and services .................................31
2.10.1.1. Principle..........................................................................31
2.10.1.2. Established trade custom of business extension is
required ..............................................................................33
2.10.2. Same or similar production places and/or methods of
manufacture........................................................................34
2.10.3. Relation to other factors..................................................35
3. Similarity of goods: raw materials, ingredients and parts /
components / fittings .....................................................................36
3.1. Raw materials .............................................................................36
3.2. Ingredients of prepared food .......................................................36
3.3. Parts, components and fittings ....................................................37
4. The comparison of services with services .....................................38
4.1. Nature .........................................................................................38
4.2. Complementary services.............................................................38
4.2.1. Complementary character (similarity) accepted..................38
4.2.2. Complementary character (similarity) denied .....................39
4.3. Services in competition ...............................................................39
4.4. The relevant public......................................................................39
4.5. Usual origin .................................................................................40
5. The comparison between goods and services ..............................40
5.1. In general ....................................................................................40
5.2. Services usually provided to customers without the need to
purchase the corresponding goods (or vice versa) .....................40
5.3. Services ancillary to goods, i.e. usually provided together with
goods (or vice versa)...................................................................42
5.3.1. Goods and services dissimilar ............................................42
5.3.1.1. Usual origin of goods and services is not the same.......42

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5.3.1.1.1. Principle.........................................................................42
5.3.1.1.2. Services of transport, packaging and storage of goods.42
5.3.1.1.3. Other cases ...................................................................43
5.3.1.2. Usual origin is the same but either good or service is
not part of the core business ..............................................43
5.3.2. Goods and services may be (remotely) similar ...................43
5.3.2.1. Installation, maintenance and repair services ................43
5.3.2.2. Advisory services...........................................................44
5.3.3. In particular restaurant services and foodstuffs food and
drinks ..................................................................................45

IV. SPECIFIC GOODS AND SERVICES COMPARED ..........................47

1. IT/telco goods and services...........................................................47
2. Similarity of retail services among themselves and of goods and
retail services ................................................................................48
3. Similarity of import and export services and goods .......................50
4. Footwear, clothing, headgear, handbags, accessories .................50
4.1. Footwear and clothing are similar ...............................................50
4.2. Headgear and clothing are similar...............................................50
4.3. Handbags and clothing are similar ..............................................51
4.4. Specific accessories to clothing ..................................................51
5. Pharmaceuticals............................................................................51
5.1. Pharmaceuticals and pharmaceuticals........................................51
5.2. Pharmaceuticals and cosmetics..................................................52

V. INTERRELATION OF FACTORS......................................................53
1. Predominant Factors .....................................................................53
2. Interdependence of factors............................................................54

VI. CONCLUSION ..................................................................................55

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CHAPTER 2: LIKELIHOOD OF CONFUSION

B. SIMILARITY OF GOODS AND SERVICES

I. PRINCIPLES OF THE COURT AND THEIR APPLICATION

IN PRACTICE

1. The relation between similarity of goods and services and

likelihood of confusion

1.1. Similarity of goods/services is a necessary condition of likelihood of

confusion

In the absence of identity of the conflicting goods and services, their similarity
is a necessary condition for a finding of likelihood of confusion under Article
8(1)(b) CTMR. The similarity of the goods and services covered by the
conflicting signs has been addressed in the case-law of the Court.

In Canon the Court stated that the similarity of goods and services is a
necessary condition for the application of Article 8(1)(b):

… even where a mark is identical to another with a highly distinctive character,

it is still necessary to adduce evidence of similarity between the goods or
services covered … the likelihood of confusion presupposes that the goods or
services covered are identical or similar (Canon, paragraph 22).

In Sabèl already, restating part of the 7th recital to the CTMR, the Court had
said:

… The appreciation of the likelihood of confusion depends on numerous

elements and, in particular, … on the degree of similarity between the signs
and the goods or services ... (Sabèl, paragraph 22)

It follows from these statements that the degree of the similarity between the
goods and services has to be assessed in each case. Together with the
degree of similarity of the signs, the degree of distinctiveness of the earlier
mark (see Sabèl, paragraph 24), the level of sophistication and attention of
the average consumer of the goods or services in question (see Lloyd,
paragraph 26), and any other factor relevant to the case, the degree of
similarity of the goods and services constitutes the basis for determining
whether confusion is likely to occur.

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1.2. Similarity of goods/services to be interpreted in relation to likelihood of

confusion

The 7th recital to the CTMR also indicates how similarity of goods and services
should be interpreted:

“An interpretation should be given of the concept of similarity in relation to the

likelihood of confusion“.

And the Court has defined likelihood of confusion as

... the risk that the public might believe that the goods or services in question
come from the same undertaking or, as the case may be, from economically-
linked undertakings, constitutes a likelihood of confusion ...
... there can be no such likelihood [of confusion] where it does not appear that
the public could believe that the goods or services come from the same
undertaking or, as the case may be, from economically-linked undertakings.
(Canon paragraphs 29 & 30)

The importance of common origin (in the broad sense) for the scope of
confusion reveals the kind of similarity required as regards the goods and/or
services in comparison:

The connections between the goods/services must be capable of suggesting

that they come from the same or economically linked undertakings.

See cases T-85/02 CASTILLO / EL CASTILLO, paras. 33 et seq.; T-99/01

MYSTERY (fig) / Mixery, para. 41, and C-106/03 HUBERT (fig) / SAINT-
HUBERT 41.

1.3. Similarity of goods/services independent of similarity of signs or

distinctiveness of earlier mark

The similarity of the goods and services in question must be assessed without
taking into account the degree of similarity of the conflicting signs in the
concrete case or the distinctiveness of the earlier mark.

1.4. An “absolute” outer limit of similarity exists

An “absolute” borderline must be drawn between goods/services that are

similar and those that are dissimilar. This means that one and the same pair
of goods and services always are either within or outside that borderline.

A definition of the outer limit is required for several reasons:

First, there is a need for legal certainty.

Second, where the products are dissimilar, the earlier mark can be a basis for
refusal of the CTM application only under the conditions set out in Art. 8(5).
Those conditions confer enhanced protection on marks with reputation. It is

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often difficult to establish that the conditions, which include an unfair

advantage or a detriment to the distinctive character or the repute of the
earlier mark, are met.

Third, it is desirable that the assessment of goods and services by the Office
and by the relevant authorities of the Member States run in parallel. For
Member States’ trade mark authorities it will become indispensable to define
an “absolute” outer limit in the following two situations, which makes the need
for the Office to make this definition as well obvious:
Where the Member State does not provide enhanced protection for marks
with reputation. Art. 4(4)(a) of the TM Directive leaves it up to the discretion of
the Member States to do so.
Furthermore, a Member State may choose to provide such enhanced
protection only for cancellation and infringement but not for opposition
proceedings. (Germany, e.g., has done so.)

The definition of the borderline between (remotely) similar and dissimilar

goods and services must be based on the following test:

The goods and services are similar if, supposing identical marks, the public
could believe that they come from the same or economically-linked
undertakings.

This test is in line with a similar statement of the Court in its Ideal Standard
judgment (under paragraph 16). The definition follows from the interpretation
of the 7th recital to the CTMR made above, under section 1. A narrower
approach, assuming that the signs are merely similar, would leave gaps in
protection. Conversely, a broader approach, assuming in addition to identical
signs a maximum degree of distinctiveness of the earlier mark, would blur the
borderline with Art. 8(5). Where the earlier mark enjoys a reputation, the public
will hold the belief that nearly all products come from the same or, at least,
economically-linked undertakings.

2. Assessment of the degree of similarity of the goods and services

in practice

2.1. How to make the assessment of similarity of goods and services

Marketplace realities must be determined

It is necessary to base the findings on the realities of the marketplace, i.e.

established customs in the relevant field of industry or commerce. These
customs, especially trade practices, are dynamic and constantly changing.

The examiner may know the customs from the facts and evidence submitted
by the parties. Furthermore, there may be relevant facts that are “notorious”
and therefore do not need proof. What does not follow from evidence or is not
notorious cannot be taken into account (cf. Article 76(1)).
It is important that the examiner refrains from any speculation concerning the
realities of the marketplace regarding, for example, machines or IT goods or

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business services. Phrases like: “It may well be that certain manufacturers of
goods 1 are also engaged in the manufacture of goods 2” or words like
“perhaps” may not be used.

2.2. Express and consistent answers required

A finding of likelihood of confusion requires an express answer in the decision

to the question of similarity of the goods/services concerned. If the
goods/services are found to be similar, the respective answer must also
indicate the degree of similarity.

The answer as to whether or not the goods/services are similar (and, if so, to
what degree) is generally given in the “similarity of goods/services” part of the
decision. In borderline cases, the answer need not be given in that part but
may be given in the final part “conclusion” only (see below, under 4.2.2.d.).

Furthermore, the assessment regarding similarity of goods/services must be

consistent. This means that no divergent results must be reached in different
decisions as regards the same compared goods/services.

In borderline cases (remote similarity v dissimilarity), the answer as to whether

or not the goods/services are similar (and, if so, to what degree) may be left
open in the similarity analysis and may be given in the “conclusion” part of the
decision only.

In such cases, the various relevant factors concerning the similarity of

goods/services in dispute must be discussed in the similarity part of the
decision. The question is whether, from a commercial perspective, there is a
link between the goods/services. In the example clothing (cl. 25) v perfumery
(cl. 3), it should be identified, for example, that these goods may be sold
together and may be manufactured under the responsibility of one single
undertaking. 1

It will then be for the likelihood-of-confusion analysis to determine whether the

link between these goods is sufficient, in the light of the similarity of the signs,
the distinctiveness (intrinsic or acquired through use) of the earlier mark and
any other relevant factor, to justify a finding of likelihood of confusion. As a
precondition for a finding of likelihood of confusion it must, at this stage, also
be expressly stated that the goods and services have been found to be
similar, and to what degree.

3. The Nice Classification and the similarity of goods/services

The fact that the respective goods or services are listed in the same class of
the Nice Classification is not, by itself, an indication of similarity. According to
Rule 2(4) CTMIR, the Nice Classification serves purely administrative
purposes and as such does not provide in itself a basis for drawing
conclusions as to the similarity of goods and services. Thus, the argument in

1
Amended on 13/11/2008

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one case that scientific instruments are similar to switches, sensors and
controllers because they are all in class 9 was not considered valid.
371/1999 TAMRON (cl.9) / AMRON (cl.9) (EN).

Notwithstanding Rule 2(4) CTMIR, it is however important to note that, to

some extent, the classification of goods and services follows the same
principles as the analysis of similarity of goods/services. In such cases, goods
or services in the same class may indeed be similar.

Jessie N. Marshall writes in her treatise “Guide to the Nice Agreement

concerning the international classification of goods and services” (published in
2000, see p. 25):

As far as the class headings are concerned, their structure is not uniform.
Some headings may encompass others and cover all the goods of the class.
All the goods included in class 5, for instance, flow from the first phrase
“pharmaceutical, veterinary and sanitary preparations”.

Furthermore, the line between some class headings may blur. This is the
case, for instance, with the paper goods (paper, cardboard and goods made
from these materials, not included in other classes) and printed matter in class
16. See Marshall, p. 89.

In this context it is also appropriate to note that the classes of the Nice
Classification are structured according to factors that may indeed be relevant
for the similarity analysis. This is illustrated by the following examples quoted
from Marshall’s textbook.

Class 1: function [i.e. one facet of “nature”]

… goods are properly included in Class 1 if their functions are based on their
chemical properties rather than any specific application to which the goods
may be put.
(pp. 1 et seq.)

Class 3: purpose of the use

All items relating to cosmetics, personal hygiene (when not for medical
purposes) and general cleaning or polishing are classified in Class 3. ... There
are many items that can be classified in Class 3 and another class depending
on whether the use of the item is for cosmetic or toiletry purposes as opposed
to some other very specific purpose. (p. 14)

Class 18: nature, purpose of the use

Most items that are made of leather are classified in Class 18 unless they
serve a purpose that is more suitably classified in another class. (p. 101)

Classes 20 and 21: Miscellaneous goods – no indication of similarity

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These classes are often confused with each other since both are sometimes
referred to as the ‘catch-all’ or miscellaneous goods classes. … each class
only includes miscellaneous goods of specified material compositions. (p.108)

Class 32: competitive goods

… the classification of beer in this class is based on its characterisation as a

soft drink alternative. (p. 159)

II. THE RELEVANT TERRITORY

The territory where the earlier mark has been registered will also determine
the geographical extent of the comparison. This is important to the degree that
national consumer habits or trade customs may have an impact on the way
that goods are manufactured, distributed or consumed (method of use) in the
relevant territory.

T-169/02 NEGRA MODELO / MODELO (EN).

According to OD practice, differences between national markets should be

taken into account in the comparison of goods and services as a matter of
fact. They may lead to differing outcomes as to the similarity of certain goods
in different territories.

This approach does not run counter to the notion of one single European
consumer. According to the Court of Justice the average consumer is deemed
to be reasonably well informed and reasonably observant and circumspect
(Lloyd, paragraph 26), irrespective of nationality or residence.

Taking into account national consumption habits, such as those relating to

beverages (e.g. the habit of mixing water and wine in Germany), does not
impinge on the “reasonably well informed and reasonably observant and
circumspect” standard. If the consumption habits were not taken into account
by the Office in a case where the earlier right is a national trade mark, the
Office could not properly assess likelihood of confusion in the Member State
concerned. By basing its decision on an artificial consumption practice, there
would be a risk that the Office would decide differently from authorities in the
Member States (trade mark offices and/or courts) that will take into account
the national consumption habits. Such a practice would contravene the goal of
having non-contradictory decisions concerning one and the same territory, no
matter whether national or Community authorities take them.

National habits may also have an impact on the consumer’s perception of the
goods and services and thus affect his attention, an issue usually dealt with in
the overall assessment of likelihood of confusion.

Example:

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In 1999-2001 Blû (cl. 33) / BLU (cl. 32) (EN) it was held that consumers would
mix alcoholic and non-alcoholic drinks, especially in the German market where
mixed beverages are very popular. The distribution channels of the two
products, i.e. alcoholic beverages (except beers) and “mineral and aerated
waters and other non-alcoholic drinks; fruit drinks and fruit juices”, were also
considered to be similar in Germany. Both categories of products can be
found in supermarkets and grocers’ shops close to each other on the same
shelves in these outlets. Furthermore, in Germany, it would be likely for
producers of “alcoholic beverages (except beers)” to also produce the goods
covered by the other mark in suit.

But see R 36/2002-3 Lindenhof/LINDERHOF (fig) (DE) where the Board found
only a remote similarity between sparkling wine (“Sekt”) and, in particular, fruit
juices and mineral waters in the relevant German territory. This remote
similarity was held to be insufficient for a likelihood of confusion despite the
marks being very similar aurally..

Confirmed in Judgment of 15 February 2005 in case T-296/02, para. 49

through 59.

III. SIMILARITY OF GOODS: FACTORS CONSIDERED

1. General principles

As far as the criteria for establishing similarity of goods/services are

concerned in greater detail, the Court held in Canon that:

... In assessing the similarity of the goods and services … all the relevant
factors relating to those goods or services themselves should be taken into
account. Those factors include, inter alia, their nature, their and
their method of use and whether they are in competition with each other or are
complementary (paragraph 23).

As stated above (under B.I.3.6.1.d), the term “end users” is an incorrect

translation. The correct translation is “purpose of use”.

The term “inter alia” shows that the enumeration of the above factors by the
Court is only indicative. The similarity of goods and services cannot depend
on any number of fixed and limited criteria that could be generally determined
in advance, with a uniform effect in all cases. There may be other factors in
addition to or instead of those mentioned by the Court that may be pertinent
for the particular case.

Similarity of the goods/services in question must be determined on an

objective basis. “Objective basis”, however, does not mean abstract or
intrinsic basis. Rather, it is the commercial perspective that is of paramount
importance.

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The Court held in Canon that in assessing the similarity of goods all the
relevant factors relating to those goods themselves should be taken into
account.

The most important factors are set out below and will be treated in that order
in the subsequent text:

[Canon factors:]
nature (composition, functioning principle, appearance, value et al.)
purpose (intended use): same or similar uses
method of use
complementary goods/services
competitive / interchangeable goods/services: satisfaction of the same or a
similar demand

[possible further factors:]

channels of distribution: same or similar channels of distribution; in particular
placement in the same points of sale
the relevant public
the usual origin of the goods/services: type of undertaking controlling the
production of the goods; in particular the place of production and the method
of manufacture.

In any given case, the examiner must determine the relevant factors and the
corresponding features that characterise the relationship between the goods
and services compared, and the weight to be attributed to each of these
relevant factors.

The principal aim of the comparison of the goods /services is not to identify all
features of the goods or services in question in an abstract manner. What
rather matters is the overlap of the factors, such as nature, purpose and
method of use etc., that characterizes the specific pair of goods and services
in question. Thus, the relevant factors and features characterizing good A or
service B may be different depending on the goods and services they have to
be compared against.

It must be noted that in many cases there will be overlaps between the factors
in the sense that where one is fulfilled another one will usually be met as well.
This question is discussed at the end of the discussion of each factor and
summarised at the end of the similarity-of-goods and services part, under
“predominant factors”.

To safeguard consistency and transparency of decisions, examiners are

instructed to use the wording of the factors above, i.e. nature, purpose etc.,
and not equivalent wordings, unless they identify this equivalence clearly. For
instance, instead of purpose of use, one could also say “destination” or
(consumers’) “needs served”. But using these terms could only lead to
confusion as to what is meant by the factor. Furthermore, using the same
concept in accumulation might suggest the presence of a higher degree of
similarity because a greater number of factors would coincide: “The purpose,

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destination and needs served are the same”. This sentence, however, simply
includes a repetition of one and the same concept, and that repetition,
obviously, should have no bearing whatsoever on the outcome of the case.

2. The specific similarity factors applied to the comparison

between goods and goods

2.1. Introduction: The distinction between factors may be difficult

In the following sections an attempt is made of defining and illustrating the

various factors for similarity of goods and services. However, it is
acknowledged that there are cases in which a distinction between various
factors will be difficult to draw. This is particularly true as far as “nature”,
“purpose” and “method of use” are concerned. See the table under section
2.5. below. Where the examiner encounters such difficulties, he/she should
not make a great effort at distinguishing the factors but rather treat them
jointly. In such a situation, he/she could, for instance, state that the goods
compared have the same nature and the same purpose indicating the specific
facts on which this finding is based.

The final remarks on their relative importance at the end of the discussion of
each factor, in addition to chapter 8 on the interrelationship of the various
factors, should further help in delineating the boundaries between them.

2.2. Nature

2.2.1. General considerations

(i) The main criteria for defining “nature”

A variety of criteria of the goods/services in question may be useful for

determining their nature, in particular:

- composition,
- functioning principle,
- physical condition (e.g. liquid/solid),
- appearance (design).

These criteria are analysed below, under 2.2.2.

(ii) Nature to be defined from a commercial perspective

As with all factors concerning the similarity of goods/services, the nature of

one set of goods/services must be defined from a commercial perspective in
relation to the other goods/services.

Examples:

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CTMA Features of the goods Earlier mark good

good
Intrinsic Commercial
Ice as Both: frozen Ice-cream: Ice for cooling
edible ice water foodstuff; ice for
(“ice- cooling: auxiliary
cream”) good for
preserving
foodstuffs
Ice as Frozen water v Both goods are Flour confectionery,
edible ice preparations sweet foodstuffs rolls, biscuits
(“ice- made from
cream”) flour et al

In the first example edible ice v ice for cooling, there is an overlap in the
composition of the goods, i.e. both consist (partly) of frozen water. From a
commercial point of view, however, this is obviously irrelevant. What matters
is that one is a foodstuff while the other is not. Therefore, their nature is not
similar.

In the second example as well, the composition is irrelevant. It is the fact that
both are sweet foodstuffs and typical desserts that makes their nature similar
from a commercial perspective. See BoA 795/1999-1 (Allegro / ALLEGRO):

"Edible ices" are to be compared with, in particular, "flour confectionery",

"rolls" and "biscuits". Although ... ice cream products are frozen, they are like
confectionery products, sweet foodstuffs … [the nature]

(iii) Dictionary entries may but do not necessarily provide help

If the nature cannot already be deduced easily from the specification,

additional information may be derived from dictionary entries.

955/1999 SUPERFLAM (cl.9) / EUROFLAM (cl.9, 11) (FR)

However, since only the commercially relevant factors count, the examiner
should not merely rely on dictionary entries, as case R 152/2000-3
DIPPIN’DOTS / dippin’dots (fig) (EN), (paragraph 24) suggests:

The Board held that

the contested decision is inconsistent in the treatment of ‘ice’ and ‘ices’ in

Class 30 in the application. Whilst it holds that ‘ices’ are identical to ‘ice
creams and edible ices’ and are similar to ‘frozen yoghurts; novelty frozen
water beads; frozen dessert products’, it holds that ‘ice’ is not similar to the
opponent’s goods because of differences in nature and purpose … Here, the
Board refers to the The New Shorter Oxford Dictionary, 1993 Edition,
according to which ‘ice’ is the singular of ‘ices’ and means inter alia ‘(An) ice
cream’ or ‘Icing for cakes’. It must be concluded therefore that ‘ice’ in the

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application is identical to ‘ice creams and edible ices’ protected by the earlier
marks.

This quote clearly shows the pitfalls of relying on dictionary entries only. Given
the fact that both “ices” and “ice” are mentioned in the specification, OD had
correctly assumed that “ices” refers to edible ice, whereas “ice” was meant for
cooling purposes. (Both types of ice are classified in class 30 of the Nice
Classification.) Thus, OD had properly concluded that the goods differed in
nature and purpose.

To fall under the same broad heading is not sufficient for a finding of similar
nature.

The fact that the goods/services to be compared fall under the same heading
does not mean that their nature is more than remotely similar if the heading is
comprehensive. An example of such a broad heading is foodstuffs for human
consumption.
See 1210/1999 COCOPOPS(cl.30) / COCO (cl.31) (EN), where the goods
fresh fruit on the one hand side and coffee, flour, and bread on the other side
were held to be of a different nature. Case 2339/2001 LA VIE CLAIRE (fig) /
La Vie Claire (fig) (EN) provides another illustration: “Meat, fish, poultry and
game are foodstuffs of animal origin. Oranges, tangerines, lemons, grapes
and all kind of fresh fruits, onions, green vegetables and vegetables are also
foodstuffs. This slight connection does not preclude that their nature is
different.” Only where the common heading is sufficiently narrow may this
weigh in favour of an identical or similar nature.

Examples:

- Milk products as a sub-category of foodstuffs: “As regards the nature of

the products concerned [i.e. condensed milk and cheese], the Court ... notes
that the raw material of both products is milk and as a result they must both be
classed as milk products ... The relevant public ... considers ... [the products]
... to be part of the same product family” (see judgment of the CFI of 4
November 2003 in Case T-85/02, ”Castillo”, at paragraph 33).
- Any kind of distilled spirits (being alcoholic beverages) is similar to any
other kind of such spirits.

2.2.2. The various features of goods defining their nature

(i) Composition (raw materials, ingredients or finished materials combined),

(ii) Functioning principle,
(iii) Physical condition (e.g. liquid/solid),
Appearance (design),
Value.

The relevant criteria determining the nature of goods are those that, in relation
to the other goods or services, attract the attention of actual or potential
customers on the marketplace. The importance varies according to the good
concerned. The main relevant criterion may, for example, be

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Similarity of goods and services

- the composition: alcohol in alcoholic beverages (the shape of the bottle is

often of little importance) or, conversely,
- the appearance: toy (the composition is often unimportant).

(i) Composition (raw materials, ingredients) of goods

An identical or similar composition of the goods in question is not per se an

indicator of the same nature. Foodstuffs, for instance, may or may not be
characterised by their composition. In the case of ice cream v flour
confectionery the goods were held to be similar despite a different
composition, in particular because both are desserts.

However, in the case below this is different because one set of the goods are
main dishes, the other desserts and ingredients; one is of animal origin, the
other is of plant origin:

Meat, fish, poultry and game are foodstuffs of animal origin. Oranges,
tangerines, lemons, grapes and all kind of fresh fruits, onions, green
vegetables and vegetables are also foodstuffs. This slight connection does not
preclude that their nature is different.

2339/2001 LA VIE CLAIRE (fig) / La Vie Claire (fig) (EN).

Likewise, cooking fat does not have the same nature as petroleum lubricating
oils and greases even though both contain a fat base. Cooking fat is used in
connection with the preparation of dishes for human consumption, whereas
the oils and greases are applied in conjunction with machines.

Generally speaking, an identical or similar composition is not conclusive for an

identical or similar nature if the raw materials of which the goods consist vary
and can be substituted. This is different, i.e. conclusive for an identical or
similar nature, where the composition characterises the good. Such will often
be the case where the material of which the good is composed is precious or
rare.

(ii) Functioning principle

The various functioning principles of a good include mechanical functioning,

with or without engine/motor, optical, electrical, biological, or chemical
functioning.

Example of similar nature:

Magnetic, electronic or optical carriers and semi-conductor devices (cl. 9), all
incorporating digitised typefaces or printer’s fonts in class 9 are similar to
magnetic tapes (cl. 9). The nature is the same, as they all are carriers.
1623/2002 PRADO et al. / PRADO (EN) against 1298/2001 WAITEC (fig) /
Wytek (fig) (EN), which is not followed.

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Similarity of goods and services

Printing plate benders (cl. 7) and assembly machines of cardboard boxes or

like products (cl. 7).
R0610/2000-4 PROFORM / PLAFORM (EN)

Washing machines using washing powder (chemical) and new washing

machines using magnetic waves for cleaning

(iii) Physical condition (e.g. liquid or solid)

The physical condition may be, but is not necessarily an important sub-factor
of “nature”. The marketplace reality is decisive.

Yoghurt, for instance, is marketed both as food and drink (liquid yoghurt).
These goods, therefore, share the same nature.

(iv) Appearance

There are goods where the appearance and not the composition, the
functioning principles or the physical state is of paramount importance.

Example:

For certain toys it may be of secondary importance whether they are of plush,
cardboard, wood, metal, or other materials (save where the certain safety
standards must be met for young children). What might be of importance for
the customers is an attractive shape.

2628/2001 JAKO-O (fig.) / JOCKO (DE) reversed on other grounds by the

BoA

(v) Value (price) of the good or service

Jewellery made of gold – fashion jewellery.

From a commercial point of view, golden or plastic earrings, for example, will
be considered different because of their divergent value.

But similarity may be found under other criteria. Therefore, caution should be
exercised in distinguishing between luxury and everyday goods because the
maker of one might well also offer the other.

2.2.3. Relation to other factors

“Nature” may overlap with “purpose” and “method of use”. The method of use
is often defined directly by nature and purpose.

2.3. Purpose

2.3.1. Purpose defined

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Similarity of goods and services

Purpose means the intended use of the goods or services and not any
accidental use. The term purpose is tantamount to the (economic) function of
the goods/services. It shows the need satisfied (consumers) or problem
solved (business customers). Purpose is a synonym for “destination” but that
latter term is not often used by native English speakers in this context (in
French the term destination covers both “purpose of use” and “customers”).

2.3.2. Determining the proper level of abstraction

It is sometimes difficult to determine the proper level of abstraction for

determining the purpose.

Foodstuffs, for instance, are defined as “any substance containing nutrients,

such as carbohydrates, proteins, and fats, that can be ingested by a living
organism and metabolised into energy and body tissue” (see Collin’s e-
dictionary).

The fact that foodstuffs are “metabolised into energy and body tissue” by a
living organism constitutes a basic-level purpose (just as ingestion is a basic-
level method of use). Since the factors “nature” and “purpose of use” (as well
as “method of use”) were enumerated in Canon one-by-one, without any
hierarchy between them, they must be considered as independent of each
other. This being so, it follows from pure logic that facts used for determining
“nature” cannot once again be the basis of the analysis of the factor “purpose”
(or “method of use”). Where a basic purpose (and a basic method of use) is
part of the definition of the nature of a good, “purpose” (and “method of use”)
within the meaning of the Canon decision must therefore be assessed on a
higher level of abstraction in order not make these factors become redundant.

In the case of vinegar, e.g., the purpose of use should not be defined as
“human consumption” (which is part of the nature) but by “everyday
seasoning”. Cf. the table below, under section 2.5.

It appears that the CFI expressed the same view in case T-85/02, “Castillo”.
Regarding the nature of the goods condensed milk and cheese, the Court
considered these goods to belong to the same product family (para. 33). On
the other hand, the Court found little similarity between these goods as
regards their purpose (translated as “end use”) and/or the way in which they
are used. It said that the “fact that both products may be used as cooking
ingredients is a characteristic which they share with virtually all foodstuffs”
(para. 34). Thus, the CFI confirmed that facts pertaining to the nature of a
good, such as foodstuffs, cannot be the basis for the assessment of the
purpose of that good as well.

2.3.3. Consequences of different purposes on the decision on similarity

If one of the two goods has a very specific purpose there may be a strong
indication of dissimilarity, as in the case of specialised software integrated in a
haemodialysis machine and multimedia software.

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Similarity of goods and services

713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN)

2.3.4. The relation between nature and purpose in particular

Where the nature is different but the purpose is the same, similarity is
frequently found, as the following three examples show.

Example 1: Goods used in the kitchen in cl. 21 / cutlery (cl. 8)

The goods in class 21, certain goods used in the kitchen, are similar to the
goods in class 8, namely cutlery, “… although they have a different nature and
perhaps different use. In fact they are all implements that are normally used to
carry out tasks related to household purposes and, in particular, cooking or
they are used in combination with, and at the same time as cutlery … They
are manufactured by the same enterprises and sold through the same trade
channels, targeted to the same circle of customers”.

R 0478/2001-3 CUCINA & Co (fig.) / LA CUCINA (fig.)

Example 2: Footwear / clothing

Despite a different nature, in particular because of the same purpose, the

goods are similar:

Footwear, shoes and boots serve the same purpose, in principle, as the items
of clothing listed: they are intended for wear by humans, both as protection
from the elements and as articles of fashion.

T-115/02 “a” (fig.) / “a” (fig.)

Example 3: Pharmaceutical substances / plasters

The goods of the application pharmaceutical and sanitary substances;

medicines; pills are drugs or substances used for treating, preventing, or
alleviating the symptoms of diseases or injuries due to accidents. Plasters are
adhesive strips of material, usually medicated, for dressing different kinds of
wounds. Materials for bandaging are therapeutic or protective materials used
for dressing wounds or for binding a broken limb. Although all of these goods
are of a different nature from the opponent’s goods, they share a similar
purpose, i.e. the cure of diseases, disabilities or injuries. 2940/2000
APEX/APEX (EN)

2.3.5. Relation to other factors

Purpose is an important factor. Since it defines the intended use of the good
or service, it is the easiest way for a customer to identify such good/service.
Based on the purpose, it is also possible to determine who the actual and
potential customers, i.e. the relevant public, are.

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Similarity of goods and services

When the purpose is similar and the goods/services are in the same (properly
calculated) price range, the goods/services will usually be in competition and
have a substantial overlap in the relevant public, i.e. the actual and potential
customers.

Furthermore, the method of use usually depends on the nature and purpose
of the goods.

2.4. Method of use

2.4.1. Method of use defined

The method of use determines how the good is used to achieve its purpose. It
can usually be inferred from

the functioning principle of a good, i.e. the nature, and

from the function that the goods or services fulfil in the marketplace (need
satisfied or problem solved), i.e. purpose of its use.

Method of use, therefore, often follows directly from the nature and purpose of
use and then has no or little significance of its own in the similarity analysis.

2.4.2. Determining the proper level of abstraction

Just as the factor nature may be defined by a basic purpose (see above,
under section 2.3.2.), a basic method of use may also co-determine the factor
nature. In the example already discussed under “purpose” above, the nature
of foodstuffs is defined, inter alia, as any substance containing nutrients
(composition) that can be ingested by a living organism (basic method of use).
It should be obvious that this basic method of use cannot define the separate
factor “method of use” because otherwise that factor would have no
significance independent of the factor nature.

In the case of vinegar, e.g., the method of use can therefore be defined by the
way vinegar is used to season foodstuffs Cf. the table below, under section
2.5.

2.4.3. Where “method of use” can be an important factor

Notwithstanding the explanation above, under section 2.4.1., the method of

use may be important, independent of nature and purpose, where it
characterises the goods:

In favour of similarity:

“Pharmaceutical preparations for treating medical conditions of the skin or of

the hair can take the form of creams or lotions. Both sets of goods have the
same method of use as cosmetics, which also include creams and lotions.”

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Similarity of goods and services

1981/2002 VITANOV / NOVA VITA (fig) (EN)

However, even where the method of use characterises the goods under
comparison and where it is identical for both goods, this fact alone will not be
sufficient to establish similarity.

Against similarity:

Rubbing – pouring down

Whilst “polish” is in principle intended to be rubbed on metallic objects to

make them shine, and thus has a partially aesthetic purpose, the goods to
which the application for registration relates (“preparations for cleaning waste
pipes for the metal-working industry, except textile auxiliary agents and
auxiliary agents’”) are essentially intended to be poured into waste pipes to
dissolve metallic deposits in order to clean and unblock waste from the metal-
working industry, which shows that they have a utilitarian purpose.

T-126/03– ALADIN/ ALADDIN, para. 85

Relation to other factors:

Method of use often follows directly from the nature and purpose of use and
thus is usually not a very important factor.

2.5. How to properly distinguish the factors nature – purpose – method of

use

As stated in the two previous sections on “purpose” and “method of use”, it is

sometimes difficult to determine the proper level of abstraction for these two
factors in order to avoid applying the same facts as for the assessment of the
factor “nature”. The table below summarises the discussion above.

The Hubert case is used as an example. The goods are: “edible fats”
(graisses alimentaires) v. “vinegar, sauces” (vinaigre, sauces)

Factor Suggested Suggested application of Application by the

definition of definition of factor CFI
factor
Nature The type of Ancillary foodstuffs Foodstuffs
good (including
a basic Definition of foodstuff:
purpose and a any material, substance,
basic method etc., that can be used as
of use) food

Definition of food:
any substance
containing nutrients,
such as carbohydrates,

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Similarity of goods and services

proteins, and fats, that

can be ingested by a
living organism [basic-
level method of use]
and metabolised into
energy and body tissue
[basic-level purpose]

(definitions from Collin’s

e-dictionary)

Purpos What the good Everyday seasoning “Human

e is intended to (upper-level purpose) consumption”, i.e.
be used for the basic purpose
and basic method
of use (part of
“nature”)

Metho How the good Moving a bottle to and Everyday

d of is used to fro or moving a spoon to seasoning of
use achieve its and fro foodstuffs, i.e.
purpose upper-level
purpose

2.6. Complementary Goods

2.6.1. Principles

Goods (or services) are complementary if there is a close connection between

them, in the sense that one is indispensable or important for the use of the
other and is not merely auxiliary or ancillary. If these conditions are fulfilled,
this weighs in favour of similarity. Customers may think that the responsibility
for the production of both goods is the same. This impression is even more
likely if the goods are also offered together.

Example: Smokers’ articles v filter cigarettes. They are of a different nature.

…Nevertheless they are similar because there are various features which the
respective goods have in common: the goods concerned not only have
common end users, the smokers of cigarettes, but are, in particular,
complementary to each other since they are both used for the purpose of
consuming nicotine. This complementary character is quite strong since the
use of filter cigarettes even requires complementary articles which can be
used to light cigarettes. Therefore, the goods concerned are often bought by
the consumers at the very same moment and in connection to each other.
Furthermore, they are sold by the same retailers and, to some extent,
distributed through the same trade channels. Nowadays, some manufacturers
of filter cigarettes put lighters and matches on the market under their cigarette
brand.

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Similarity of goods and services

500/2000 BOSS (fig) / Baldessarini HUGO BOSS (fig) (EN).

The fact that there are undertakings, which market complementary goods,
such as smokers’ articles and filter cigarettes, under the same trade mark
shows that it may be justified to infer a common origin from the
complementary nature of goods.

It further follows that the mere fact that goods are complementary may suffice
to establish similarity of the goods, even a high degree of similarity. This factor
is of importance, where the nature (in the example above, lighter – cigarettes),
the purpose (lighting – smoking), the method of use (pressing a button –
inhaling) are different and the goods are not in competition (one cannot smoke
a lighter).

If the goods are complementary, the distribution channels and customers will
often be the same.

The OD practice concerning complementary character can also be illustrated

by decision 1051/2002 DODIPETTO / dodie (fig) (EN):

The fact that the broad wording of the earlier marks includes goods for babies
[general cl. 3 goods, not restricted to babies, as well as “babies’ bottles,
babies’ bottle teats”], and that both the latter and clothing for babies can, at
least sometimes, be found in the same selling points is not enough to justify
the conclusion that they are complementary and similar.

2.6.2. General examples

Complementary goods

Handbags –were considered complementary to clothing, footwear based on

the following reasoning:

The goods handbags in class 18 are closely related to articles of clothing;

footwear in class 25, in the sense that they are likely to be considered by the
consumers as accessories to articles of outer clothing and even to footwear
(for example women’s handbags). Even if it is not usual for clothing
manufacturers to directly produce and market handbags, it is reasonable that
a significant part of the public considers such goods to be “complementary
accessories”, because they are closely co-ordinated with outer clothing and
footwear and they may well be distributed by the same or linked
manufacturers. Moreover, these goods can be found in the same shops.

2008/2000 WANNABE (fig) / WANNAGO (EN)

Further examples of complementary goods include Towels are

complementary to swimwear and beachwear in the sense that they are
normally used when going to the beach or to the swimming pool.

435/2001 LORIS / FLORIS (EN).

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Similarity of goods and services

Belts (cl. 25) and shoes (cl. 25):

1481/2002 ROHDE / DANRHO (fig) (DE)

Hardware – software

554/2002 QUANTUM / QUANTUM (EN)

Computers / machine-readable data carriers

398/2002 COMCONNECT / ComConnect (DE)

Preservatives against rust – paints, varnishes, lacquers

1496/2002 CASACOLOR / CAPACOLOR (DE)

(ii) Non-complementary goods

On the other hand, if the connection is loose, the public is not likely to
establish a link between the goods at issue: electric cables and software were
not considered similar simply because they contribute to the operation of the
same kind of machine.

922/1999 RADIFLAM (cl.9) / FLAM (cl.9, 42) (EN)

2.6.3. Accessories

(i) Complementary and similar

Cosmetics and soap boxes, cosmetic cases.

611/1999 VERI (cl.3, 21) / VERITÉ (cl.3) (ES)

Watch-cases are complementary to watches.

1850/2001 T (fig) / T (fig) (EN)

eyeglass lens cleaning solutions, frames, and accessories, namely eyeglass

cases and chains and eyeglass lens cleaning cloths compared with contact
lenses.

1475/2002 CONTINUA / CONTINUA (EN)

(ii) Not similar

Manicure cases (cl. 8) and cosmetics (cl. 3)

1479/2002 BARATTI / Mario Barutti (DE)

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Similarity of goods and services

Containers for the storage of drinks, in particular bottles for drinks (cl. 21) and
certain alcoholic and non-alcoholic drinks in cl. 32 and 33 (different origin,
different customers)

50/2002 la bamba (fig) / BOMBA (fig) (DE)

2.6.4. Complementary character defined by consumer habits

Consumer habits that are often defined by tradition and local custom may also
be important for a finding of complementary character. Thus, it was held that
the local custom of drinking beer and schnaps together in certain Member
States was an indication of similarity.

982/1999 GIRAF (cl.33) / GIRAF GOLD (cl.32) (EN)

2.6.5. Auxiliary or ancillary goods

Certain goods or services can be considered “auxiliary” or “ancillary” in

relation to specific other goods or services. Such consideration will generally
not suffice to support a finding of similarity of the goods or services.

Goods and services are not complementary and are not usually similar to the
main goods/services. Some examples of ancillary goods in classes 9, 16 and
38 follow.

(i) Class 9, 16, and 38 goods and services

Financial services are not similar to class 9 and 16 goods in particular

because these goods are only auxiliary tools and thus dependent ancillary
goods to the provision of the financial services. The mere fact that financial
services are provided by using software and data carriers does not make
these goods and services similar.

188/2002 FOCUS / FOCUS TV (fig) (DE)

Insurance and financial affairs (cl. 35) are not similar to cl. 9 goods and cl. 38
services, namely data processing equipment and computers, computer
programs; communication services and data transmission by computer;
scientific and industrial research; computer programming. The cl. 9 and 38
products are only a working tool, the nature is different.

R 518/2000-1 EUROPAY 6000 / EUROPAY (EN),

(ii) In particular class 16 goods

Organisation and conducting of exhibitions are not similar to paper, printed

matter and other cl. 16 goods.

1444/2001 BLUMENTAL / Blumen Worldwide (fig) (EN).

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Similarity of goods and services

Transport; packaging and storage of goods; travel arrangement are not similar
to magazines, publications, either

(cl. 16) 2515-2000 NATURA (fig) / Natura Comfort (fig) (EN).

2.6.6. Sales promotion by manufacturers of goods or providers of services

Merchandise given away for sales promotion purposes is not similar to the
goods/services to be promoted. Rather, such sales promotion is to be
considered like advertising:

Travel arranging and conducting of travel tours and leather products, clothing,
games, sporting articles are not similar. For the purpose of considering goods
and services similar, it does not suffice that it is customary for the providers of
a service to hand over to clients goods as a complimentary gift, free of charge.

R 72/2000-1 (EN) THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN)

Similar considerations apply where a manufacturer of goods or a provider of

services gives away goods, such as T-shirts, CDs, wallets etc., for purposes
of sales promotion.

2.6.7. Relation to other factors

The complementary factor plays its most important role where the goods are
different in respect of nature and purpose (and following therefrom, usually
also method of use) and where they are not competitive. The mere fact that
goods are complementary may suffice to establish their similarity.

If a complementary relationship is found, the distribution channels will often be

the same.

2.7. Goods in competition

The goods at issue are in competition with each other when they are offered
to the same group of customers who may choose to substitute one for the
other for the same purpose. In such a case, the goods are also defined as
economically “interchangeable”.

For instance, wallpaper (cl. 24) and wallpaper made of textiles (cl. 27) v
paints, are competitive and similar, whereas woven wall decoration (cl. 24)
and paints are not competitive and dissimilar.

1496/2002 CASACOLOR / CAPACOLOR (DE)

Competitive goods frequently are in the same price range but not necessarily
so. For instance, jewellery made of gold and fashion jewellery compared
above under nature, are in competition even though their price (and value)
may greatly differ.

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In most cases, however, the price of goods in competition will not differ
substantially if properly calculated. Paper coffee filters are in competition with
plastic or metallic filters, as they have a similar size, shape and function, they
cover the same needs and the difference in price is not considerable for the
average consumer, being also justified by the longer durability of the plastic or
metallic filters, so that, taking into account the life span of these filters, they
might even be cheaper overall than the number of paper filters that would
have substituted them.

44/1999 TELIA (cl.21) / Teeli (cl.21) (EN)

Goods in competition share the same actual and potential customers.

45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN)

A significant part of the public will usually be familiar with both kinds of goods
and will be accustomed to seeing equivalent or interchangeable goods coming
from the same enterprise.

T-99/01 MIXERY (cl. 32) / MYSTERY (cl.29, 30, 32) (DE)

Relation to other factors:

Goods are usually competitive when they have the same purpose and are in a
similar price range.

2.8. Distribution channels, in particular placement in the same points of

sale

2.8.1. Major categories of distribution channels

Selling directly to the customer of the product. There is no agent between the
company and the customer: Selling bread in the local bakery, which produces
its own bread.

Sale through independent or dependent agents directly to individual

customers or companies.

Retail sale: Selling goods produced by others: Selling organically grown herbs
to a local grocery store.

Wholesale: Selling a big range of goods of various companies to retailers:

Selling novelty pet accessories to wholesalers who resell to a variety of pet
care stores, animal clinics and other retail outlets is an example of selling to
wholesalers or agents.

Multi-level Marketing Selling both directly to customers and to other sales

people.

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Similarity of goods and services

2.8.2. The relevance of the same distribution channels in general

If the goods are made available through the same distribution channels, the
consumer may be more likely to assume that the goods or services are in the
same market sector and are possibly manufactured by the same entity and
vice versa.

1471/1999 KALZAN (cl.5) / QANZA (cl.5) (DE),

1466/1999 FLORIDA SUN (cl.32) / FLORIDA SUN (cl.32) (EN).

2.8.3. The relevance of the same sales outlets in particular

The following quote from a WIPO document summarises the appropriate

importance to be given to identical or similar sales outlets.

Not too much emphasis should be placed on this criterion as modern

supermarkets, drugstores and department stores sell goods of all kinds.
Therefore the point of sale is less decisive when deciding whether consumers
consider that goods share a common origin merely because they are sold at
the same outlet.

Nevertheless, the criterion may be valid in cases in which goods are sold
exclusively or commonly in specialised shops. In that event, consumers may
tend to believe the origin of the goods to be the same if they are both sold in
the same specialised shops and may tend to deny that mutual origin if they
are not usually sold in the same shops.

(WIPO Introduction to Trademark Law and Practice, The Basic Concepts, A

WIPO Training Manual, Geneva 1993 (2d edition), 1998 reprint, Item 6.2.1.)

Conversely, different sales outlets may weigh against the similarity of goods,
as in the example of wheelchairs and bicycles, 1138/2002 PANTHER (fig.) /
Panther (EN):

With regard to the distribution channels of the goods in dispute, it has to be

noted that the goods of the earlier mark are likely to be sold either in specialist
bicycle stores or in a retail store where sporting equipment is available. On the
contrary, the distribution channels of goods from the contested application are
specialised distributors of medical equipment and devices supplying hospitals
and specialised shops where devices for disabled or physically handicapped
people are sold.

Where the sales outlets are supermarkets, department stores, shopping malls,
etc., the consumer will be aware that the goods in question come from a
multitude of independent undertakings. Therefore, only where the goods in
question are offered in the same section of such shops, will this weigh in
favour of where it is common to find homogeneous goods together.

76/1998 NEGRITELLE (cl.30) / LOS NEGRITOS (cl.5, 29, 30) (EN),

1117/1999 CHATELDON (cl.32) / CHATELDON (cl.33) (EN).

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2.8.4. Relation to other factors

Where the distribution channels are different, the public will often be different
as well.

2.9. The relevant public, i.e. the actual and potential customers

2.9.1. Notion of customers

The relevant public, i.e. the actual and potential customers, of the goods and
services in dispute constitute another factor to be dealt with in the analysis of
their similarity, even though the Court has not expressly mentioned it as a
criterion as such.

The mere fact, however, that the potential customers overlap does not
constitute an indication of similarity. One and the same group of customers
may be in need of goods or services of the most divergent origin and nature.
The fact that, for example, television sets, cars, and books are bought by the
same customers, namely the public at large, has no impact on the similarity
analysis. In many cases either one or both sets of goods are targeted at the
public at large, but the purpose (consumers’ needs covered) in each case is
different. Such circumstances weigh against similarity.

Hence, travel bags and cases for drawing instruments were not found similar,
since, even where they share the same public, they have a different purpose
(cover different consumers’ needs) and will be used in different
circumstances.

1031/1999 STARTER (cl.16) / STARTER (cl.18) (EN)

While an overlap in the customers is not an indication of similarity, largely

diverging customers weigh heavily against similarity. If it could be excluded
that the two different groups of purchasers were ever confronted by both
marks in conflict, they could not be confused. However, in practice, it will
hardly ever be possible to make a finding like this. Where it is highly unlikely
that the two goods (or services) will both be encountered by their potential
purchasers in the usual course of events, the purchaser of the respective
other good, in particular a business customer, may still have a certain
knowledge of the marketplace realities in respect of both goods. Nevertheless,
such a situation is a strong indication of dissimilarity of the goods/services.

713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN)

Divergences between the relevant publics can exist where the goods of both
specifications are targeted only to consumers or only to business customers.
Divergences may be present as well in the case where one relevant public
consists of consumers and the other of business customers. It should be
borne in mind, however, that even where only business customers are
targeted, this public also acts as ultimate consumers. Therefore, the

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Similarity of goods and services

distinction between ultimate consumers and business customers is not

absolute but there are overlaps.

The following pairs of goods are examples of widely divergent publics.

- Consumers

Contraceptives for women and prostate drugs; wheelchairs and bicycles

1138/2002 (EN) PANTHER (fig.) / Panther

- Business customers

Insecticides and solvents for the lacquer industry (their respective customers
operate at different levels of the market).

877/1999 SOLVENON (cl.1) / SOLVENAL (cl.5) (EN),

- Consumers – business customers

Polishing agent intended for domestic use on the one hand, cleaning agent
addressed to the metal working industry on the other.

456/2002 ALADDIN / ALADIN (EN)

Containers for contact lenses and surgical, medical, dental and veterinary
apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic
articles; suture materials in class 10: “Containers for contact lenses are small
objects used for storing and protecting contact lenses. The end users of these
goods are the average consumers whereas all the opponent’s goods [surgical,
medical, dental and veterinary apparatus and instruments, artificial limbs,
eyes and teeth; orthopaedic articles; suture materials in class 10] are targeted
at surgical, medical, dental or veterinary practitioners. The applicant’s goods
are usually sold at opticians. The applicant’s goods are not similar to any of
the opponent’s goods.”

2940/2000 APEX / APEX (EN)

Different price ranges are an important factor if they show that the
goods/services are chosen by entirely different groups of customers. In that
case, the goods/services would be marketed through different distribution
channels. However, buyers of the low-priced goods/services may have heard
of the expensive products and think that the manufacturer or provider has
expanded its product line. Also, buyers of high-priced goods may also buy
low-priced goods. Depending on the case, therefore, different price ranges
may or may not weigh against similarity.

2.9.2. Relation to other factors

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Where the distribution channels are different, as in the case of different levels
of the market (e.g. raw materials – finished goods), the overlap between the
customers will be small.

2.10. Usual origin of the goods/services

2.10.1. Usual origin of goods and services

Usual origin is the same: goods/services may be similar

2.10.1.1. Principle

WIPO has suggested the following test of similarity of goods and services:

As a general rule goods are similar if, when offered for sale under an identical
mark, the consuming public would be likely to believe that they came from the
same source. All the circumstances of the case must be taken into account,
including the nature of the goods, the purpose for which they are used and the
trade channels through which they are marketed, but especially the usual
origin of the goods, and the usual point of sale.

(WIPO, Introduction to Trademark Law & Practice, Item 6.2.1.)

While it is true that the Court has not mentioned the usual origin of the goods
(or services) in conflict as one of the relevant factors for similarity, it should
follow from the 7th recital to the CTMR and the Court’s definition of likelihood
of confusion that the usual origin of the goods or services is of particular
importance for the similarity analysis.

As stated above, under B II 4.1., according to the 7th recital to the CTMR “an
interpretation should be given of the concept of similarity in relation to the
likelihood of confusion”. The Court has defined likelihood of confusion as “the
risk that the public might believe that the goods or services in question come
from the same undertaking or, as the case may be, from economically-linked
undertakings, constitutes a likelihood of confusion” (Canon, paragraph 29). It
follows that the connections between the goods and services must be capable
of suggesting that they come from the same or economically linked
undertakings.

From the Court of Justice’s definition of likelihood of confusion it follows that,

where the compared goods and services, in the mind of the public, usually
have the same origin, i.e. come from the same type of undertaking or from
economically-linked undertakings, this is a strong indication of similarity.

1195/1999 DELI / DELI CHEF (EN)

However, two provisos apply to this conclusion:

It is not sufficient for the criterion “usual origin” that the goods or services in
question are manufactured or offered by a limited number of undertakings,

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such as big groups of companies that are responsible for a wide range of
goods or services in divergent business sectors. What matters, rather, is the
usual offering of the goods/services in the relevant business sector since only
such usual offering can influence the public’s perception. The fact that a group
of companies produces pharmaceuticals, coffee and chocolate does not make
all these goods similar due to a common origin, because the goods may be
produced by different companies belonging to that group and their affiliation to
the group might not even be known to the customer. However, if the company
of the group produces coffee and chocolate under the same business
identifier the common origin may be an element, because this might indicate
that a common origin indeed is common for those products, regardless of that
company being part of a group of companies As stated, the public’s
perception will be discussed in the final global-assessment analysis.

Nor is it the criterion “usual origin” of relevance for marques de commerce.

Such marks are frequently used to label goods that are not similar among
each other and are not manufactured by the same or economically-linked
undertakings.

The Court of First Instance has recognised that the usual origin may be of
relevance for the similarity of goods.

In ELS/ILS (case T-388/00) the Court held:

It must be observed that, in order to supply services involving the

'development and running of correspondence courses', it is both helpful and
usual to make use of 'educational textbooks and printed materials namely
student workbooks, catalogues, teaching manuals, printed instruction
materials and charts and booklets designed for students seeking to learn
English as a second language'. Thus, undertakings offering any kind of course
often hand out those products to pupils as support learning materials
(paragraph 55).

Similarly, the Court said in MYSTERY/Mixery (case T-99/01):

The Board of Appeal … found that beers and other beverages could come, in
particular in the bottling and marketing stages, from the same undertakings,
could be sold side by side and had the same destination … The Board of
Appeal therefore rightly concluded that the goods concerned in Class 32 were
similar (paragraph 40, emphases added.)

Considering the same usual origin as a factor in the analysis of the similarity
of goods/services should not be misinterpreted as turning the examination of
likelihood of confusion and similarity upside down: by anticipating the outcome
of an analysis, which is supposed to be based on a number of factors (nature,
purpose etc.), which should determine the perception of usual origin in the
mind of the relevant public. Rather, the factor “usual origin” is of relevance
mainly where it can be safely established that the public considers the usual
origin of the goods/services to be the same or to be different.

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Example 1: Clothing and footwear

“Many manufacturers and designers will design and produce both. This is
especially true of retail outlet chains or chain stores, which will often provide
footwear and clothes under the same trade mark.

R 634/2001-1 “a” (fig.) / ”a” (fig) (EN),

2001/2002 PANAMA JOE'S GRILL-CANTINA-BAR / PANAMA JACK (EN).

Example 2: IT, telecoms and video

A prime example for the same undertakings in control of goods and services
are the IT (information technology), telecommunications and video industries
that have been converging since the early 90s. The same applies to the IT
and electrical engineering industries in general, especially in the area of
consumer electronics. These goods and services are therefore similar.

507/2002 T Flexitel / FLEXITEL (DE) (IT - telecoms),

192-2002 Delta Access (fig.) / DELTA (DE) (consumer electronics),
398/2002C ComConnect/comconnect (DE) (electrical engineering).

Example 3: Entertainment industry

There are manifold interrelations in the entertainment industry. They make it

possible to assume that manufacturers of recorded videocassettes are
economically linked with undertakings that rent such cassettes.

1355-2001 Prinz Dracula / Dracula (DE)

2.10.1.2. Established trade custom of business extension is required

The need for an established trade custom is of particular importance where

manufacturers expand their businesses to adjacent markets, e.g. from
clothing to cosmetics. In such situations it is necessary to determine whether
such expansion is common in the industry or, conversely, whether it may
occur in exceptional cases only.

Example where extension has become customary:

The trend in the brewing industry to expand its line to alcohol-free beer.

45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN),

shoes – handbags

2008/2000 (EN) TJ’s (shoes) / TJ Collection (handbags),

1440/2000 (EN) Giorgio (shoes) / Giorgio (handbags).

Examples where extension is not (yet) common:

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Internet services – content

The presence of interrelations between Internet service providers and content

providers (such as vertical integration, as in the case of AOL Time Warner or
Vivendi Universal) would make it possible to hold content, such as motion
pictures, to be similar to telecommunications services if these interrelations
were an established commercial custom. However, it is not yet clear whether
or not this trend will stabilise. This is an example of changing business
customs.

Therefore, the OD, for the time being holds telecommunication services and
the content sent through the telecommunications network to be dissimilar.
This is illustrated by the following case:

Production of audio-visual work for television, cinema and radio (cl. 41) v
telecommunications (cl. 38). Telecommunication providers will release these
performances; however, this does not make the services similar. Their
different nature and purpose (to communicate versus to inform or entertain)
make these services different.

1305-2001 TELENOR CTMA / TNE TELENORDEST (EN)

Jewellery - hotel services

The example of Bulgari in Italy which provides both goods and services does
not in itself establish a trade custom.

Finally, it is sufficient if a substantial part of the goods/services are made or

provided by the same or economically-linked enterprises. This may be the
case, e.g., if the usual origin of the goods in question is identical only in the
upscale market segment, such as in the case of clothing and cosmetics. In
such cases, however, the similarity of the goods or services may only be very
remote if many other similarity factors are different, as is the case in the
example of clothing and cosmetics

1642/2002 EVOLUTION (fig) / Evolution the World of Sacred Device (EN)

2.10.2. Same or similar production places and/or methods of manufacture

If it cannot be clearly established that the public will think that the goods in
question come from the same or economically linked undertakings, it may still
infer such common origin if the place or geographical zone of production of
the goods, or the time or method of manufacture are the same.

It should be noted that in Canon the Court specifically referred to the place of
production and held that, in order to demonstrate that there is no likelihood of
confusion, it is not sufficient to simply show that there is no likelihood of the
public being confused as to the place of production of the goods (Canon,
paragraph 29). This statement, however, should not be interpreted in the
opposite sense, namely that the fact that the place of production cannot be a

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Similarity of goods and services

strong indicator that the goods/services in question come from the same
source.

It may be that despite different places of manufacture the goods can still be
similar. For instance, books and electronic media (goods in competition, e-
media substituting books) are both goods of a publishing house, as is the
equivalent content provided online.

Examples regarding manufacturing sites:

Same sites

All kinds of chemicals: varnishes, lacquers, colorants and mordants are

normally produced in the same production enterprises, normally specialised
chemical companies,

Rentolin/RENOLIN, R 0837/2001-3 (EN)

Different sites

Video film cassettes, production of films for cinemas and television

organisations et al. v motion picture cameras, television filming and recording
devices (relevant goods and services in the Canon judgment of the Court).

It should be repeated that while the same manufacturing sites suggest a

common usual origin, different manufacturing sites do not exclude that the
goods come from the same or economically-linked undertakings.

Examples regarding method of manufacture:

Same method

Belts (cl. 25) and shoes (cl. 25):

1481/2002 ROHDE / DANHO (fig) (DE)

Different method

Pharmaceutical products differ from napkins and napkin pants for

incontinence with regard to their method of production.

R 0807/2000-3 DEMARA / DEMAR ANTIBIOTICOS, S.A. (EN)

2.10.3. Relation to other factors

The factor is of relevance mainly where the usual origin in the public’s mind
can safely be established independent of a detailed analysis of the other
factors and where it is clear that the public is aware thereof.

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3. Similarity of goods: raw materials, ingredients and parts /

components / fittings

3.1. Raw materials

In most cases, the mere fact that one good is used for the manufacture of
another will not be sufficient in itself to show that the goods are similar, as
their nature, purpose and customers may be quite distinct. Raw material is
intended for use in industry rather than for direct purchase by the final
consumer. This was held in the cases of animal skins and clothing or precious
metals and jewellery.

46/1999 OXYDO (cl.25) / OXYDO LAMBFURS (cl.18) (EN),

452/1999 ECO-PEL (cl.25) / ECOPEL (cl.18) (DE),
149/2001 Arcadia (fig) (cl 14) / Arcadia (cl14),
1190/1999 FOUR SEASONS (cl.25) / 12 SEASONS (cl.24, 25) (EN).

However, the final conclusion may depend on the specific circumstances of

the case, such as the degree of transformation of the raw material, if it is the
basic component of the final good, the extent to which it determines the
overall price of the final good, whether the trade mark of the intermediate
good used “survives” in the final good, etc. The greater the significance of the
raw material for the final good, the more likely will the goods be similar.

3.2. Ingredients of prepared food

According to the OD practice, the mere fact that one basic ingredient is used
for the manufacture of another will generally not be sufficient in itself to show
that the goods are similar, as their nature, purpose and customers are
generally quite distinct.

1955/2001 HAPPY / HAPI (EN) (eggs v ice cream; coffee, cocoa, sugar,
honey v ice cream),
1926/2001 EARTHGRAINS (fig) / EURO GRAIN (EN) (bread v flour),
241/2001 CANDY CASTLE (fig) / CANDY CARL (EN) (sugar, honey treacle v
confectionery).

However, at least a low degree of similarity can exist as long as the basic
ingredient can be considered as a main ingredient of the prepared dish.
OD does not go as far as some decisions of the Boards of Appeal according
to which almost all foodstuffs have at least a certain degree of similarity (see
already above, under 5.2.2.b. (i)).

1955/2001 HAPPY / HAPI (EN) (milk, milk products v ice cream).

The Third Board of Appeal considered that as soon as there is a possibility

that an ingredient may be included in the preparation there is a degree of
similarity between the goods. According to that logic, for example, coffee, tea,
cacao, sugar may be considered similar to ice cream or confectionery.

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R 152/2000-3 DIPPIN’S DOTS / DIPPIN’DOTS (fig) (EN),

R 253/2000-3 SELZ SODA (fig) / SELZ (EN).

The same Board has based its reasoning also on another wider criterion,
which is that foodstuffs will quite often be combined. Although they are
independent goods, they will be offered together either in restaurants or in
supermarkets (e.g. vinegar and sugar).

The First Board seems to have taken a similar approach: In R 160/2002-1 O

SOLE MIO! / Sole Mio (fig), it held flour and preparations made from cereals,
bread, pastry, salt, edible oils and fats to be similar to pizzas. The goods are
similar not only because they are basic food products but also because they
are basic ingredients of pizzas.

The approach of these decisions of the Boards of Appeal would lead to a

finding of at least some similarity between all foodstuffs. This is however, in
the view of OD, not in line with the general principles established by the ECJ,
and OD will continue to base its decisions on the approach described above.

3.3. Parts, components and fittings

The remarks made in respect of raw materials are to a certain extent also
valid in the case of parts, fittings and components integrated in composite
industrial goods, such as machines, installations. The mere fact that a certain
good is a component of a complex good will not necessarily be conclusive for
a finding of similarity, as held for example in the case of valve actuators and
hydraulic machine tools.

693/1999 MAS (cl.6, 7, 8, 9) / aMAX (cl.7, 9) (EN),

865-2001 i-scan / High-Scan (DE).

However, parts and fittings are often produced and/or sold by the same
undertaking that manufactures the final good and target the same purchasing
public, as in the case of spare or replacement parts. Depending on the good
concerned, the public may also expect the component to be produced by, or
under the control of, the “original” manufacturer, which is a factor that
suggests that the goods are similar.

In general, a variety of factors may be significant in each particular case. For

instance, if the component is also used or sold independently, or if it is
particularly important for the function of the machine, this will weigh in favour
of similarity.

Regarding motor land vehicles– and tyres it was held that despite differences
between the goods, the close proximity between them and the complementary
nature of the goods led to a low degree of similarity. On the other hand, in
199/1999 CUPPER (cl.12) / COOPER (cl.12) (EN) the OD concluded that the
goods vehicles and tyres are complementary but that the end users will
distinguish the different origin of the goods and that the goods belong to
different markets. The degree of similarity of vehicles and tyres is very low.

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For a finding of likelihood of confusion, therefore, the signs must be identical

or at least very similar.

4. The comparison of services with services

In principle, the same factors as for comparing goods with goods are relevant
for the comparison of services with services. However, in applying these
factors, the basic differences between goods and services, and in particular
the lack of embodiment of the services, must be considered.

Below, a number of examples for the application of various similarity factors in

OD practice are given.

4.1. Nature

The nature can be defined, in particular, as the manner in which the service is
provided.

The following examples illustrate a number of specific approaches to applying

the nature criterion to services.

- Services falling under the same category

Financial management has the same nature as business management as

both are management services. On the other hand, they have a different
purpose, the first being a financial purpose, the latter a business purpose.

1621/2002 EUROHYPO / EUROHYPO (EN)

- Nature defined by the “composition” of a service

The service production of television programmes is similar to entertainment

because the latter service includes television entertainment which is the
outcome of a number of distinct but complementary activities generally
provided by scriptwriters, actors, cameramen, lightning technicians, directors,
makeup artists, etc. The expression production of entertainment embraces all
these services.

R 1226/2000-1 GEO TV / GEO (fig) (EN)

4.2. Complementary services

4.2.1. Complementary character (similarity) accepted

Insurance is a complementary service to banking services that might be

offered by banks themselves or other financial institutions. Furthermore, it is
not uncommon for insurance companies to also carry out bank activities and
the financial market of today is seeing an integration between banks and
insurance companies for instance through mergers and acquisitions. The
public at large, which will normally use the services for different purposes, will

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associate the activities with each other since they might be offered by the
same company and even in the same premises.

R 38/2000-1 ADVANTA (fig) / ADVANTAGE (fig) (EN),

2507/2001 BAMB (fig) / BAM (EN).

Travel arrangement (cl. 39) is complementary to providing food and drink and
temporary accommodation in hotels and restaurants (cl. 42). Travelling
necessarily involves accommodation and catering. Moreover, the services are
commonly offered together by travel agencies in the form of package holidays.

1356-2000 atlas (fig) / ATLASREISEN, 1357-2000 atlas (fig) / ATLASREISEN

(fig) (both EN)

Building services (cl. 37) and designing hotels (and/or businesses) for
entertaining and providing leisure for guests (cl. 42) are complementary.

1469-1999 INTER HOTEL (fig) / DEUTSCHE INTERHOTEL (EN)

4.2.2. Complementary character (similarity) denied

Instruction and entertainment services and publishing services are not

complementary since the link between them is not strong enough: The
instruction and entertainment services may include publication of instruction or
entertainment materials as part of the main services. However, this is not
sufficient to render these services similar. Materials are very often published
as a support for many activities.

712/2001 GRUPO TELEKOM (fig) / TELEKOM (fig) (EN)

4.3. Services in competition

Edition of digital and analogue recording carriers containing certain

information v publication and edition of books, newspaper and magazine (both
services in cl. 41). They are similar because publishing houses offer their texts
not only in print but also in digital or analogue form.

1198/2002 MicroFocus (fig) / FOCUS (DE)

4.4. The relevant public

Because of only a small overlap of the publics concerned, insurance and

financial affairs (cl. 36, CTMA) were held to be only very remotely similar to
the edition of multimedia chip card systems (cl. 42), or to chip cards, magnetic
cards, bar code carriers, bar code cards (cl. 9). The edition of chip card
systems is directed at business customers, not at consumer customers who
mainly use the insurance and financial affairs services. Business customers,
on the other hand, will be more attentive and recognise that insurance and
financial companies do not usually offer the technological card services or
manufacture the cards themselves. Nevertheless, a small overlap between

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Similarity of goods and services

the relevant public does exist because business customers also act as private
individuals and, thus, as ultimate consumer customers.

2066/2001 DENCARE / DentCard (fig)(DE)

4.5. Usual origin

Auto care services v packaging and storage of goods: dissimilar.

The average consumer is aware that the relevant sectors of industry are
clearly different and thus he is not likely to attribute the same origin to them.

757-2000, SMART / SMARTRAIL (EN)

5. The comparison between goods and services

5.1. In general

The same principles that apply for the comparison between goods & goods
and services & services apply in cases where goods are compared with
services.

As a starting point, there are numerous differences between goods and

services. By their nature goods are generally dissimilar to services. This is
because goods are articles of trade, wares, merchandise, or real estate. Their
sale usually entails the transfer of title in something physical, i.e. movables or
real estate. Services, on the other hand, consist in the provision of intangible
activities.
2607/2000 ENVIROMET, ECOMET / EnviroMed (EN)

Goods and services can, however, be complementary (e.g. maintenance may

be complementary to the good concerned). Services can also have the same
purpose, i.e. intended use, and thus be in competition with goods. For
instance, car leasing, a financial service, may be considered in competition
with cars.

It follows that, under certain circumstances, similarity between goods and

services can be found.

Two specific categories may be distinguished: services usually provided

independently of the corresponding goods or vice versa, and services where
no such assumption can be made.

5.2. Services usually provided to customers without the need to purchase

the corresponding goods (or vice versa)

A trade custom may be established according to which the same undertakings

usually provide services to customers independent of whether or not they
have purchased the corresponding goods (or vice versa). That means that the
services are not merely ancillary to the goods, such as the repair or

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Similarity of goods and services

maintenance of a machine by the manufacturer of that machine. Such a trade

custom strongly weighs in favour of similarity.

Examples:

- Hygienic and beauty care v cosmetics

1546-2001 Megadent / MENTADENT (DE)

- Film rental v motion pictures; services of an optician v spectacles;

automatic vending machines v rental of such machines

1355-2001 Prinz Dracula (fig.) / Dracula (DE)

Goods and services that undertakings provide independently of each other:

the information technology (IT) and telecommunications (telco) business, e.g.
Apparatus for recording, transmission or reproduction of sound, images or
data (cl. 9) are similar to telecommunications (cl. 38)

507/2002 FLEXITEL / T --- Flexitel (fig) (DE) against 1936/2002 WELCOME /

WELCOME Real Time (EN) and 1642/2002 evolution (fig) / EVOLUTION The
World of Sacred Device (EN), which are not followed;

But see section 8.4. where it is stated that IT/telco goods and services are not
similar to any other (non IT/telco) goods/service simply because they are used
in conjunction with each other.

Certain services whose object is the production of a good; example:

Publishing services v books: The publishing services constitute a natural part
of the goods. The book would not appear on the market without the
publication. The core activity is to publish books and in reality it is more for
administrative classification reasons that there is a difference between the
goods and services. In the market they are clearly similar.

1252/2001 NOVIA / NOVIA (fig) (EN)

See also 507/2002 FLEXITEL / T --- Flexitel (fig) (DE): printed matter (cl. 16) v
publication and edition of certain manuals, brochures for teaching purposes
(cl. 41), and
1837-2001 LE MERIDIEN (fig) (cl. 16) / MERIDIANI (cl. 41) (EN) and 1252-
2001 NOVA (class 16) / NOVA (fig) (cl. 41) (EN) on similarity between printed
matter and publication of printed matter due to the core business of publishing
companies.

- Further examples:

• Building materials and customer service with regard to the sale of buildings
and building materials: similar

9/2001 JAM (cl. 19)(fig.) / JM (fig) (class 35)(EN)

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• Fashion design services and fashion information services and clothing:

1522/1999 LILLYWHITES (fig.) cl.25 / LILLY (cl. 42) (EN)

See also 2374/2001 CITY DESK (cl. 42) / citi (fig) (cl. 9) (EN),
1865/2001 VORTEC (fig) (cl. 9) / VARTEC (cl. 38) (EN).)

5.3. Services ancillary to goods, i.e. usually provided together with goods
(or vice versa)

Where services are ancillary to goods – or where goods are ancillary to

services - similarity is more difficult to establish because the public might
believe that the manufacturer of the goods is not a genuine service company,
or vice versa. A higher degree of similarity of the signs and / or an enhanced
degree of distinctiveness of the earlier mark are needed to establish a
likelihood of confusion.

5.3.1. Goods and services dissimilar

5.3.1.1. Usual origin of goods and services is not the same

5.3.1.1.1. Principle

If the usual origin of the goods and services is not the same or that of an
economically-linked enterprise, the goods and services are dissimilar.

82/2002 EN CUBIX (cl. 16 playing cards UBIX (cl. 41

entertainment)
224/2002 EN PIA (cl. 9 computers PIAS (cl. 35
accounting and payroll
banking services)
831-2002 EN SEAT (cl. 12 automobiles) SKY-SEAT (cl. 41
entertainment, sporting
and cultural events)

5.3.1.1.2. Services of transport, packaging and storage of goods

Services of transport, packaging and storage of goods have been considered

not to be similar to goods in classes 9, 25, and 29, 32. These services are
provided by specialist transport companies whose business is not the
manufacture and sales of those goods.

297-2000 EN FRUTTAVIVA et al (cl. FRUTA VIVA JUVER

29,32) (cl. 39)
743-2000 EN CHIP SET (cl. 39) CHIP (fig) (cl. 9)
780-2000 EN EAR (fig) (cl. 9) EAR (fig) (cl. 37)
1075-2000 EN RAINHA et al (fig.) (cl. REINA DECO (fig) (cl.
25) 39)
2850-2000 EN SPORT AUTHORITY (cl. THE SPORTS
39) AUTHORITY (cl. 25)

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2019-2001 EN IKKS COMPANY et al. KKS (fig) (cl. 39)

(cl. 25)
2061-2001 EN IDE (fig) (cl. 39) IDEM (cl. 9)

5.3.1.1.3. Other cases

If the fact that the goods and services are offered together is merely
incidental, as in the case of promotional material or gifts, the connection will
not be strong enough. Thus, travel bags were found dissimilar to travel
agency services.

R 72/2000-1 (EN) affirming 964/1999 THE GREY LINE (cl.39) / GREYLINE

(cl.18, 25, 28) (EN)

5.3.1.2. Usual origin is the same but either good or service is not part of the
core business

When considering the similarity of goods and services it is important to take

into account the core business of the undertakings providing the respective
goods and services.

For example, the core business of advertising agencies is to provide

advertising services to other businesses. Even if the goods at issue may
appear in the advertisements, this is insufficient for finding similarity, because
the nature of advertising services is fundamentally different from the
manufacture of goods. The same reasoning will apply in cases where the
advertising services are compared with class 9 goods that can be used as a
medium for disseminating advertising.
1621/2002 EUROHYPO / EUROPHYPO (EN)

Furthermore, the fact that most undertakings rely on advertising or other

promotional tools to stimulate business does not make these tools similar to
the goods promoted. The reason is that companies engaged in promoting
their goods do not usually offer promotion services to third parties.

5.3.2. Goods and services may be (remotely) similar

Services provided in connection with goods

5.3.2.1. Installation, maintenance and repair services

In the relation between goods and their installation, maintenance and repair,
similarity of goods and services could be sustainable, if it is common in the
relevant market sector for the manufacturer of the goods to also provide such
services.

In such cases a finding of likelihood of confusion could be justified, especially

if the signs are identical or very similar and/or the earlier mark enjoys a
reputation.

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Similarity of goods and services

- class 9 goods

Data processing installations and computers, and components therefor were

found similar to installation and repair of electronic apparatuses.
1629-2001 EXPRESSO (cl. 37) / XPRESSO (fig) (cl 9)

On relation between installation services and class 9 goods see also:

461-1999 LIS (cl. 9) / LIS (cl. 37) (EN),
780-2000 EAR (fig) (cl. 9) / EAR (fig) (cl. 37) (EN),
1095-2001 ADCO (cl. 9) / ADCON (cl. 37) (EN) ),
1775-2001 NOHMI (cl. 9) / NOMI (fig.) (cl. 37) (EN),
352/2002 CALIFORNIA (cl. 12) / CALIFORNIA EXCLUSIVE (cl. 37) (EN).

1671/2002 ACOME (fig) / ocom (EN) repair services and data processing
equipment, computers: link found.

- Installation, maintenance and repair of water purification apparatus and

installations v water treatment apparatus and installations: similar
1800/2002 CRISTAL / CLASSIC CRYSTAL (fig)(EN);
another example for maintenance: 40/2002 CALL ONE / ALL ONE (EN).

- For the relation between automobiles and parts thereof and motor vehicle
maintenance and repair services: similar, see S-CLASS (cl. 12) / S TYPE (cl.
37) R 969/2000-1 (EN): similar.

- Furniture and the installation of furniture are similar , 873/2002 space

/ space 2 (fig) (DE)

- Weighing equipment; namely industrial weight display terminals for

weighing scales cl. 9:
It is common in the field of industrial equipment for it to be serviced and
maintained by the manufacturer or a related company. Installation,
preservation and repair services electronic apparatus are normally provided
by the manufacturer of such very specific and delicate apparatus itself or by
specialised companies which may refer to the trade mark of the producer if it
is necessary to indicate the intended purpose of a service. Therefore, the
goods and services are similar. See R 344/2001-3 LYNX / LYNX (fig) (EN)

5.3.2.2. Advisory services

Advisory services, consultancy and the like are a further example where
similarity between goods and services can be found under conditions similar
to those concerning maintenance, installation and repair.

Examples:

1800/2002 (EN): consulting, advisory, and information services relating to

installation, maintenance and repair of water purification apparatus and
installations v water treatment apparatus and installations.

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Similarity of goods and services

1390/2001 (focus (fig.) / FOCUS) (cl. 7, 37) (FR) advisory services relating to
the installation, maintenance and repair of machines v laser cutting machine.

(bb) Goods provided in connection with services

In some cases similarity between the goods and services can be found when
goods are essential for the provision of the service. Then a complementary
relationship exists between the goods and services. Thus, the goods
educational material are of central importance for education services and their
strong connection was considered an indication of similarity.
1207/1999 ILS (cl. 9, 16, 41) / ELS INTERNATIONAL (cl. 35, 41) (EN),
affirmed R 75/2000-3 (EN) and, as for similarity of goods and services,
affirmed by the CFI as well.

Further example:
Providing of travel information v audiotapes, videotapes, CDs, laser discs,
films and motion pictures, computer software, and CD-ROM; magazines,
books, newspapers, newsletters and other printed publications: “Certain
degree of similarity” between these specific services and the goods which also
encompass specific goods related to travel information because goods could
be considered as specifically made for providing such information.
880/2001 TIME / TIM (fig) (EN)

5.3.3. In particular restaurant services and foodstuffs food and drinks2

Restaurant services vs food3

This is an example of the impact of national consumer habits or trade customs

on the (degree of) similarity of goods and services.

- There is an average degree of similarity where the foodstuffs are offered

independently of restaurant services and are not merely ancillary to these
services. Foodstuffs offered independently include finished meals that may be
taken away (“for here or for to go?”). Depending on the Member State,
foodstuffs offered independently of restaurant services may as well comprise
certain processed or unprocessed types of food, such as confectionery, ice
cream (processed) or meat (unprocessed) because confectioneries/bakeries,
ice cream parlours and butcher’s shops may also offer the consumption of
their goods in an adjacent fast-food restaurant or café. Likewise, breweries,
e.g. in Spain or Germany, have traditionally had their own restaurants.4

- On the other hand, merely ancillary goods are only remotely similar. Such
ancillary goods include semi-processed food, such as jellies, jams; preserved
and cooked fruits and vegetables, as well as certain drinks, such as coffee.
The question as to whether a likelihood of confusion can be found will depend

2
Amended on 11/01/2010
3
Amended on 11/01/2010
4
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Similarity of goods and services

on the other factors, in particular on the degree of similarity of signs and the
degree of distinctiveness of the earlier mark.

- Finally, there is one category of foodstuffs that are not similar to restaurant
services at all. This category includes certain basic or unprocessed kinds of
food, such as eggs, flour, salt, as well as certain drinks, such as generally soft
drinks. These goods are not similar to restaurant services because even if
they are labelled with identical marks, the consumers will not believe that
restaurants are in control of their manufacturing.5

Restaurant services vs drinks6

- In certain countries producers of certain drinks (such as breweries in Spain

and Germany) traditionally have their own restaurants. Whenever this occurs,
be it in respect of beer or any other drink, an average degree of similarity is to
be found.7 See decision of the Third Board of Appeal in cases R 536/2001-3 &
R 674/2001-3 NEGRA MODELO /MODELO (EN), confirmed by the CFI (T-
169/02) with regard to “services related to bars, restaurants and night clubs”
as compared against “syrups, beer, soft drinks and non-alcoholic drinks”:

“33 These services are not absolutely dissimilar, as the Opposition Division
has stated, but they are similar in a wide sense to ‘syrups, beer, soft drinks
and non-alcoholic drinks’ in Class 32 of the earlier right. The opponent is right
in saying that despite the fact that beer, in effect, can be consumed in other
places besides bars, restaurants and night clubs, it will certainly be difficult to
find a bar, restaurant or night club where beer is not marketed and consumed.
Therefore, there could be a certain link between the services and goods to be
compared because it cannot be excluded that breweries or producers of non-
alcoholic drinks or soft drinks will provide their products in their own
restaurants or bars, marked with the same sign or logo of their beverages.”

In the rest of the cases only a very remote similarity is to found. Apart from
being obviously different in nature serve different purposes, they are usually
provided by different undertakings, and are not in competition with, nor
complementary to each other. Drinks may be consumed at restaurants, but
consumers, more than merely purchasing a drink, are asking to be served
one. There is a considerable difference between the two situations; a
difference that is furthermore reflected in the respective price. Alongside with
drinks available, restaurants provide consumers with a place where to enjoy a
meal and socialise. Another important element of restaurant services is the
level of personal attention and expertise in the preparation and in the serving
of drinks. Often a selection of different brands is made available together with
other types of drinks and drinks are served ready to be consumed in optimum
conditions according to common habits and trends or the costumer’s
preferences, in terms of temperature and other particularities (with or without
ice, with water, lemon, etc). Thus, serving drinks involve many other aspects

5
Amended on 16/10/2008
6
Amended on 11/01/2010
7
Amended on 11/01/2010

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Similarity of goods and services

than just the mere selling of drinks. Consumers are perfectly aware of this and
pay a price for it. Furthermore, with some exceptions (see above) producers of
drinks do not usually provide restaurant services, nor establishments
providing of food and drink usually produce their own drinks. Therefore,
notwithstanding the existence of certain links, on balance, it is that there are
not enough similarities between drinks, on one hand, and restaurant services,
on the other, to give rise confusion unless exceptional circumstances concur,
such as when the signs are identical or almost so, and there is at least a
certain level of recognition of the trade mark in question among the relevant
public.8

IV. SPECIFIC GOODS AND SERVICES COMPARED

1. IT/telco goods and services

IT and telecommunications goods and services, i.e. typically goods and

services included in classes 9 or 38, such as computers (cl. 9) or
telecommunication services (cl. 38), are similar between them (see above,
sec. 2.9.1.1.1.).

Frequently opponents base oppositions on such goods and services arguing

that they either form part of the contested goods or that the contested services
are carried out using such goods or services.

When IT/telco goods and services are compared to other services, it is not
decisive whether such other services are performed using IT or
telecommunications technology. Thus, searching services in the field of
intellectual property are not similar to IT/telco services simply because
computer databases may be used to make such a search. The nature of the
services and their purpose (consumer needs met) are obviously different.
Therefore consumers will not expect these services to originate from the same
source as the IT/telco services which may be used in this context. They are
therefore dissimilar.

The mere fact that IT/telco goods or services are in some way connected to
other goods or the performance of other services is not sufficient to allow for a
finding of similarity.

1668/2000 T (device) (DE) (cl. 9, 16, 36, 38, 41, 42, etc.) / iti (device) (cl. 42),
2095/2001 pia (devices) (DE) (cl. 35, 41 and 42) / PIA (cl. 9, 35, 42).

When telecommunications services are compared with goods promoted by

using these services a distinction must be made between the
telecommunications media and the content disseminated using these media.
The business of a telecommunications operator is to transmit content but not

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Similarity of goods and services

to manufacture and sell the goods whose promotion is the subject matter of
that content (e.g. cl. 3 goods, such as perfumes, in the case of an electronic
mail service). Consequently, there will be no similarity between these services
and goods.

1073-2001 SECRET PLEASURES (cl. 3) / PRIVATEPLEASURES.COM (cl.

38) (EN)
Furthermore, apparatus for the transmission or reproduction of sound or
images (cl. 9) are not similar to education and training services.

996/2001 TELIA / TELENIA (EN)

The detailed discussion which follows concerning the comparison of repair,

maintenance et al. of motor land vehicles (cl. 37) and electronic databases (cl.
9) et al is in line with the above principles.

Electronic databases and technical documentation are not any more related to
the vehicle industry than to any other product or service. The mere fact that
the sale, rental or servicing of motor cars may involve the use of databases or
the publication of catalogues or manuals cannot lead the public to believe that
such goods and services have the same origin. Their nature is clearly distinct
and even where goods and services are used in the sale, servicing and rental
of motor vehicles, they remain ancillary to the main business activity.
Moreover, operators in the vehicle industry usually commission the
development of electronic tools and the publication of promotional and
technical publications from companies specialised in the creative part. It
follows that the goods and services are addressed to the industry itself, rather
than the purchaser of the final product. Therefore, not only are the end-users
thereof different, but they also operate at different levels of the market.
Furthermore, it is self-evident that information technology and publishing
applications are not in competition with the sale, servicing and rental of motor
cars and that they are not offered through the same commercial channels.
Even where the buyer of motor cars gets technical or promotional material as
a complement of the main product, he is not interested in the entity that
carried out the creative work, and he is not likely to confuse it with the
manufacturer of the vehicle, in the same way that he is not going to confuse,
for example, the publisher of a specialised car magazine with the
manufacturer of the cars to which such a publication refers.

469-2001 LEX et al. / LEX-COM (EN)

2. Similarity of retail services among themselves and of goods and

retail services

In Communication No 03/0107/05 of the President of the Office of 12 March

200131 October 2005 there is an express indication regarding the conflict that
may arise between retail store services and the goods which are sold in these
department stores.9

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Similarity of goods and services

As regards conflicts between services and goods, the Office takes the view
that, while a “similarity” between goods sold at retail and retail services cannot
be denied in the abstract, the risk of confusion is unlikely between retail
services on the one hand and particular goods on the other except in very
particular circumstances, such as when the respective trade marks are
identical or almost so and or well-established in the market. Each case that
arises will of course be dealt with on its own merits.10

The communication is available at

http://oami.europa.eu/en/office/aspects/communications/03-01.htm
In view of the above, it must be evaluated whether in the concrete case the
“very particular circumstances” are present which allow the Office to consider
that there might be a likelihood of confusion in the consumers’ mind.

As regards the similarity of goods or services issue, the following principles

apply:

First, retail services not limited in the specification to the sale of particular
goods are not similar to all goods that are capable of being sold at retail. Apart
from being different in nature, given that services are intangible whereas
goods are tangible, they serve different needs. Retail services, at large,
consist in bringing together, and offering for sale, a wide variety of different
products thus allowing consumers to conveniently satisfy different shopping
needs at one stop, whereas, by definition, there are no goods serving such
purpose. So, they have different nature and serve different purpose. Finally,
they are neither in competition with, nor complementary to, each other.11

Second, retail services related to the sale of particular products are similar to
these particular goods.

Third, retail services related to the sale of particular goods and other goods
are, in principle, not similar.

Fourth, retail services not limited in the specification to the sale of particular
goods are identical with or similar to retail services in general or related to the
sale of specific goods.12

Fifth, the question whether retail services related to specific goods are similar
to retail services related to other specific goods will depend on the
circumstances involved.

The more general and vague a list of goods and services is, the larger the
scope of protection will be. When discussing the similarity of goods and
services, a non-specific wording like “retail services” thus, at least under the
aspect of similarity, provides broad coverage.

10
Amended on 16/10/2008
11
Amended on 21/01/2009
12
Amended on 8/01/2009

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Similarity of goods and services

It must be emphasised that a finding of similarity of the services with goods

does not lead to the conclusion that there exists likelihood of confusion. This
will depend on the other factors.

3. Similarity of import and export services and goods13

Import and Export services relate to the movement of goods and normally
require involvement of customs authorities in both the country of import and
the country of export. These services are often subject to import quotas, tariffs
and trade agreements. As they are being classified in class 35 they are
considered as business administration and do not relate to the actual retail or
wholesale of the goods (commercial functions). For these reasons goods are
to be considered dissimilar to import and export services for those goods. Ex:
import / export of tobacco products is dissimilar to tobacco products.

T-138/09 is not being followed, where the Court says that import/export of
vinegar has a low degree of similarity to wine.

4. Footwear, clothing, headgear, handbags, accessories

4.1. Footwear and clothing are similar

The First Board of Appeal decided:

Footwear, shoes and boots serve the same purpose, in principle, as the items
of clothing listed: they are intended for wear by humans, both as protection
from the elements and as articles of fashion and are, as such, found often in
the same departments of large departmental stores and in the same retail
outlets. Consumers, when seeking to purchase clothes, will expect to find
footwear in the same department or shop and vice versa. Moreover, many
manufacturers and designers will design and produce both. This is especially
true of retail outlet chains or chain stores, which will often provide footwear
and clothes under the same trade mark.

R 634/2001-1 “a” (fig) / “a” (fig) (EN).

4.2. Headgear and clothing are similar

The goods “headgear” of the CTM application are of an identical or very

similar nature as the goods “clothing” of the earlier mark, in particular as
regards types of clothing which is supposed to give some protection against
wind and rain. Furthermore, headgear is not only seen as a means for
protecting the head against weather influences, but also as a fashion article
which is supposed to match the outfit and, for this reason, is sometimes
chosen as a complementary item to clothing. Therefore, not only the end
users, but also the purpose of the respective goods are identical in this
regard. Moreover, the distribution channels of the respective goods are

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Similarity of goods and services

sometimes identical, and their sales outlets and departments are often either
the same or at least closely connected. Taking all these factors into account,
the goods “headgear” and “clothing” are considered similar to each other.

845/2000 M. Lorenzo (fig) / (fig) (EN)

4.3. Handbags and clothing are similar

Handbags are likely to be considered as accessories to clothing. See above,

under 5.2.5.b.2.6.2.14

4.4. Specific accessories to clothing

In a case of absolute identity of the signs, goods in cl.26 such as buttons,

pressure buttons, buckles, eyelets, plates or rivets may give rise to likelihood
of confusion if the earlier trade mark protects clothing and footwear in cl. 25 as
those goods in cl. 26 are accessories to those of the earlier trade mark, and
the applicant’s trade mark may remain visible on the resulting garment or
shoes. Even if the final product also bears another trade mark, there is no way
of ensuring that consumers who see the final product in a shop do not
attribute responsibility for the entire product to the opponent

R 267/1999-1 ZANELLA / ZANELLA (IT)

5. Pharmaceuticals

5.1. Pharmaceuticals and pharmaceuticals

Specific pharmaceuticals are generally considered to be similar to other

pharmaceuticals.

Several, if not all, similarity criteria are usually met:

Nature: specific chemical products.

Purpose: broadly speaking, healing / curing.
Distribution channels: in particular pharmacies.
Usual origin: pharmaceutical industry manufacturing a wide variety of drugs
with various therapeutic indications; consumers are aware of this.

For pharmaceuticals sold under prescription, none of the relevant factors at

the stage of purchase – the patient presents a written prescription, and the
pharmacist will fetch the product from a cupboard where all drugs are stored
in alphabetical order – helps distinguishing products with different indications.
Although there is no identity of goods, the degree of similarity is so high that
this cannot reduce the likelihood of confusion.

- For other pharmaceuticals, the degree of similarity is still high, if there are
clear medical indications. A lesser degree of similarity should only be

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considered for goods that are not necessarily sold through pharmacies
(e.g., vitamin preparations). Another relevant factor is whether the products
are both tablets, or tablets vs. creams.

- In: 2538-2001 MENT / MENTIS (FR), contraceptive v drug to improve

memory, no likelihood of confusion was found.

5.2. Pharmaceuticals and cosmetics15

In the OD’s view, there is some similarity when comparing the general
categories, but though the similarity may be low. Cosmetics include a list of
preparations used to enhance or protect the appearance or odour of the
human body. Pharmaceuticals on the other hand comprise products, such as
deodorants, skin or hair care preparations which have a medical purpose but
which are in nature, method of use and even purpose similar to cosmetics.
Furthermore, they share the same distribution channels since they can be
found in pharmacies or other specialized shops and are often manufactured
by the same companies. Therefore, these general categories should be
considered to be similar. The Third Board of Appeal also considered
pharmaceuticals and certain body care goods to be similar. See R 433/2002-3
TEI-FU / TAI-FUN.

‘Body care products’ of the application, namely perfumes, colognes,

cosmetics and deodorants can be manufactured by the same or similar
company which produces medicines or pharmaceuticals. Although medicated
goods are usually manufactured by pharmaceutical companies, it is a matter
of fact that nowadays companies whose core business is body care protection
produce both medical and non-medical products. Besides, the sale outlets
and the distribution channels of the goods in dispute are sometimes the same
(for example pharmacies where non-medical products are also sold and
perfumeries where medical goods are marketed).

In contrast, the First Board of Appeal held sanitary products and cosmetics to
be dissimilar to pharmaceuticals:

Sanitary products, cosmetics and perfumes are dissimilar since both the
method of use and the relevant consumers to which they are addressed are
different. Additionally, most of the time they are also sold in different stores.
Sanitary products, cosmetics and perfumes are available for purchase in
grocery stores, supermarkets or perfumeries while pharmaceutical products
are only available in pharmacies. In the case that they are sold in the same
outlet, they would be placed on different shelves.

R 0984/2001-1 R 0894/2000-116 Gry / GRY (EN)

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Similarity of goods and services

However, when comparing specific pharmaceuticals they may be entirely

dissimilar with cosmetics in general or specific cosmetics. In such cases it will
depend on the specific drug and its specific purpose, need or effect. For
example, a painkiller is dissimilar to a nail polish. No coherent practice exists
yet. In some cases, specific pharmaceuticals and specific cosmetics were
found to be similar:

Pharmaceutical preparations for treating medical conditions of the skin or of

the hair can take the form of creams or lotions. Both sets of goods have the
same method of use as cosmetics, which also include creams and lotions.

1981/2002 VITANOV / Nova Vita (fig) (EN)

V. INTERRELATION OF FACTORS

1. Predominant Factors

The particularities of each case may also suggest that a particular factor is
predominant. As stated above, there are factors that are more or less
important, depending on the facts of the case.

Hence, the evaluation of the various factors in the comparison of goods and
services should take account of their respective importance for the specific
case. In other words, the various factors do not have a standard value for all
cases, but rather their specific importance should be determined in the context
of each individual case.

In general, the weight of each factor will depend on the impact it may have on
the origin of the goods and services in question. Factors clearly suggesting
that the goods/services come or do not come from the same undertaking or
economically linked undertakings should take precedence over factors that
seem to have only a secondary bearing.

R 433/2000-1 Arthur (fig.) / Arthur (fig) (EN),

R 0232/2000-4 S ORLANDO (cl 29, 30) / Orlando (cl 31)(EN),
199/2000 Three Stars / Three Stars (EN).

In assessing the similarity of goods and services all relevant factors

characterising the relationship between them should be taken into account.

Generally strong factors are

- the purpose,

- the nature from a commercial point of view.

Conversely, factors generally less important because they do not often

characterise that relationship are:

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Similarity of goods and services

- The method of use: many different goods can be used in the same
manner: e.g. both pharmaceuticals and food/drink are consumed orally, but
they are not similar. Both baby carriages and shopping trolleys are moved in
the same way, and yet they are not similar.
- The distribution channels: the sales outlets are a weak factor in general,
unless specialised stores or the same sections of supermarkets are
concerned.

Divergent distribution channels and/or a minimal overlap of the relevant public

weigh against similarity.

2. Interdependence of factors

Frequently, a factor will be useful not only for the direct impact it may have on
the similarity of goods and services, but also because it may serve as an
indication that another factor is important or pertinent to a greater or lesser
extent.

This becomes apparent, for instance, from the CFI’s CASTILLO judgment.
The CFI, assessing the nature of the goods condensed milk and cheese,
found these goods to belong to the same product family (para. 33). From the
differences of their purpose and method of use the Court inferred that they
could hardly be used as substitutes and as a consequence were not in
competition (para. 35). Instead the goods are complementary since they
belong to a single product family and may be regarded as components of a
general range of milk products capable of having a common commercial origin
(para. 36).

More generally speaking, the purpose (intended use) of the goods reveals
their customers; the purpose of the goods in combination with their price may
determine if such goods are in competition with each other; the place of
production and method of manufacture may point in the direction of origin
from the same or economically-linked undertakings etc.

R 0818/2000-1 Grand Trianon / Trianon (FR)

But there are no strict rules. As stated, if the purpose of the goods is the same
and their (properly calculated) price is similar, they will often be in competition,
e.g. coffee filters made of paper and coffee filters made of metal. However,
this is not inevitable, as the example of cinema and bowling services shows.
Therefore, the similarity factors above have been discussed separately. The
examiner must assess them in their totality at the end of the similarity of
goods/services analysis to determine the overall degree of similarity.

Furthermore, the value of the various factors may differ widely, depending on
the case:

- In one case the nature may be similar, but the distribution may be very
different. Even if the same or very similar characteristics of goods (i.e. nature)

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Similarity of goods and services

would make it easy for an undertaking to produce other goods, it might

choose not do so if it faced great difficulties in finding a way to the customers.

Example: window glass – glass for spectacles.

- Conversely, the nature, i.e. product characteristics, might be totally

different, e.g. plastic – wood – glass, and require different production
equipment (or economic links with other companies), but if the product design,
the purpose of use and the distribution are the same, both types of goods
might still be manufactured under the control of the same undertaking.

Example: For certain toys it may be of secondary importance whether they are
of plush, cardboard, wood, metal, or other materials (save where certain
safety standards must be met for young children). What might be important for
the customers is an attractive shape. JAKO-O (fig.) / JOCKO 2628/2001 (DE)
(reversed on other grounds). See above, under 5.2.b.(iv).

VI. CONCLUSION

The Court stressed in Canon that if it appears that the public is not of the
opinion that the goods and services come from the same undertaking or from
economically linked undertakings, there can be no likelihood of confusion.
Therefore, if after a balanced assessment of the various factors it does not
seem likely that the public will attribute the same origin to the compared goods
and services, those goods and services must be considered dissimilar.

However, before such a conclusion may be reached, account must be taken

of the principle that in assessing the likelihood of confusion, all factors are
relevant and interrelated. Consequently, the examination may be closed due
to a dissimilarity of the goods at issue only if the same conclusion would have
been reached even if the signs were identical and the earlier mark was highly
distinctive. This has to be expressly mentioned in the decision.

For example, beer was held to be sufficiently dissimilar to electronics for the
examination to be concluded without any comparison of signs, as were art
exhibitions to clothing.

353/1999 POLAR (cl.32) / POLAR (cl.9) (EN),

904/1999 BOULEVARD (cl.25) / Bvd. PEDRALBES (cl.41) (EN),
2618/2001 Diane (cl. 5) / Diana (cl. 3, 5) (EN),
1531/2001 Lloyd’s (cl. 18, 25) / Euro Lloyds (cl. 36) (ES).

Conversely, if the overlap found suggests that the public may think that the
goods and services concerned come from the same or economically-linked
undertakings, a conclusion may be drawn as to the degree of similarity
between the goods and services, and the examination continues. As stated
(above, under IV.4.2.2.4.), such a conclusion must in any case be drawn, no

The Manual concerning Opposition, Part 2, Chapter 2B Page 55

Similarity of goods and services

matter whether at the end of the similarity-of-goods analysis or in the final

likelihood-of-confusion analysis.

1999-2001 Blû (cl 33) / BLU (cl 32) (EN).

The Manual concerning Opposition, Part 2, Chapter 2B Page 56