The IP analytics firm Darts-IP has recently published a report entitled Top 10 Product Comparisons Worldwide. The report looks at which products and services come up most often in disputes about similarity in trade mark cases, be they oppositions or infringements. The report is based on cases from around the world. But are there lessons to be learned?

The report shows that clothing comes up more often in disputes than any other product. Companies often argue about whether the following are similar: clothing and footwear; clothing and headgear; clothing and diapers (nappies); clothing and umbrellas; clothing and leather goods; and clothing and travel bags. Arguments that have been raised in support of the claim that the goods are similar include the fact that the goods serve similar purposes (for example, protecting people from the elements), that they’re regarded as fashion items, that they’re made by the same companies, and that they’re sold in the same stores. Counter- arguments tend to be the other side of the same coin: the goods are manufactured by different companies, and they are sold in different stores.

Other contentious areas include: 

  • footwear and headgear 
  • beer and other alcoholic beverages 
  • cosmetics and pharmaceutical preparations 
  • essential oils and cosmetics 
  • soap and perfumes 
  • coffee and tea 
  • computers and computer software 
  • computer software and computer programming services 
  • advertising services and business management services
  • educational services and entertainment services

It is important to know whether goods or services are similar because trade mark law places a great deal of emphasis on similarity. Broadly speaking, a trade mark registration will be an obstacle to the use or registration of a similar trade mark for similar goods or services. But the whole issue of when goods and services are similar is contentious.

One approach is a somewhat mechanical one that goes back to the old UK British Sugar case. In that case, the court said that certain factors need to be looked at, such as the uses of the goods, the users of the goods, the physical nature of the goods, and the trade channels though which they reach the market.

This approach was seemingly adopted by the South African Supreme Court of Appeal in the Zonquasdrift case. Here, the issue was whether there would be confusion through the use of the name Zonquasdrift by two unrelated parties, one who used it for wine and the other who used it for wine grapes. The court found that there would be no confusion because the goods aren’t similar: the one is an alcoholic beverage, the other is a fruit; the one is sold to the public, the other to the trade. This mechanical approach therefore seems to go like this: if it is determined that the goods are not similar, that’s the end of the enquiry; if it is determined that they are similar, then the trade marks and the likelihood of confusion must be considered.

The other approach is a more flexible one. Based on the European Canon case, this approach was applied in the South African case of New Media Publishing and it talks of an “interdependence” between the two forms of similarity, namely similarity of marks and similarity of goods. In the South African decision the court said this: “The less the similarity between the respective goods or services of the parties, the greater will be the degree of resemblance required between their respective marks before it can be said that there is a likelihood of deception or confusion in the use of the allegedly offending mark and vice versa.”

This more flexible approach seems to have been adopted in the 2013 David Mayer decision, where the Court of Justice of the EU held that clothing and handbags are similar because “they have a common aesthetic function by jointly contributing to the external image (look) of the consumer concerned.” We saw a similar outcome in a South African case of Chantelle v Designer Group, where the court found that the same mark for clothing and cosmetics would lead to confusion.

The two approaches can lead to very different results. In an EU case involving the identical trade mark for beer and tequila-based drinks, the finding was that the marks could co-exist. The decision was that the goods aren’t similar because they look different, they taste different, they don’t complement one another, they don’t act as substitutes for one another, and they aren’t sold on the same shelves in supermarkets. In a US case where the issue was whether trade mark registrations covering wine blocked an application for a similar trade mark for beer, the decision was that they did.

What can we learn from the analytics? Well, arguments might arise because a registration is limited to clothing and the issue then is whether that registration can be used to stop use or registration of a similar mark for, say, footwear. One way of avoiding an issue like this is to ensure that the registration covers footwear too, something that is easily done as the goods fall in the same class, which means that there is no extra cost involved. While it is necessary to have an intention to use the mark for the goods that are being covered, that intention can be a fairly general one. In other cases, it’s not as easy to avoid the potential for dispute because there may be more than one class involved, such as beer and other alcoholic beverages, computer software and computer programming. Here, broader coverage involves extra cost.

It is important to consider trade mark specifications very carefully. This issue should, of course, be discussed with an attorney when filing applications.