Determining Similarity of Goods and Services in IP Law

Trademarks are signs that can be any word, phrase, symbol, design, or combination of these things. Trademarks have a lot of functions. But their most important function is to distinguish the goods or services of one enterprise from those of other enterprises. In the Canon judgment (C-39/97), the Court of Justice of the European Union (CJEU) held that:

… according to the settled case law of the Court, the essential function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others that have another origin (emphasis added).[1]

Therefore, IP law gives trademark owners the right to oppose the registration of another trademark which creates a likelihood of confusion with their trademark to protect that function.

Trademark law in Turkey is regulated under the new Industrial Property Code, numbered 6769. Article 6/1 of the Code sets forth that "an application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered."

According to the article mentioned above, there are three conditions that must co-exist to determine that a likelihood of confusion exists between the trademarks. These conditions can be listed as

●     same or similar signs

●     same or similar goods and/or services

●     risk of confusion in the eyes of the average consumer.

If the goods or services that are covered by the trademarks subject to a conflict are the same, it is easy to conclude that a likelihood of confusion exists. However, if the goods or services are not the same, we have to determine whether they are similar or not.[2] For this reason, this article aims to shed light on the criteria that can be taken into account in assessing the similarity of goods and services.

1. Nice Classification

The Nice Classification or the classification system of the countries is the first tool we can use to determine whether there is a similarity between goods or services. However, these classifications are not sufficient because they only serve to standardize the registration process.

For example, live animals and flowers are in the same class (Class 31) but they are not similar.

Because of that, in order to decide on the similarity between goods and/or services, a much more comprehensive analysis should be made.[3]

2. Similarity factors

Legal regulations regarding trademark law do not directly establish criteria for the evaluation of the similarity between the goods or services covered by the trademarks being compared. However, there are some sources, that may provide insight into the criteria that can be taken into account in assessing the similarity of the goods or services. The Canon decision of the CJEU, in which important determinations were made regarding the similarity of goods and services, is the most prominent among these sources.

Based on the Canon decision, the following criteria can be taken into account in the evaluation of similarity:

• ●     nature
• ●     intended purpose
• ●     method of use
• ●     complementarity
• ●     competition
• ●     distribution channels
• ●     relevant public
• ●     the usual origin of the goods/services

2.1. Nature

The nature of a product can be defined as the main qualities of the product or service. It usually corresponds to a type of product/service or the specific category to which this product/ service belongs.[4]

For example; cheese is a milk product, and perfume is a cosmetic product.

Some of the characteristic features of the goods and services in question can be useful when determining their nature. For example, cheese is defined by its main ingredient which is milk.

2.2. Intended Purpose

The basic question that should be asked when determining the intended purpose of the product in question is ‘What need do these goods or services satisfy?’.

For example, a plastic bag is for carrying things. Even though a plastic bag can be used for various purposes, such as protection against rain, its intended purpose is to carry items. Because, as a Canon factor, purpose means the intended use of the goods and services and not any other possible use.

2.3. Method of Use

The method of use defines the way in which the products or services are being used to achieve their intended purpose. It answers the question “How are these products/services used to achieve their purpose?”  For example, books and magazines have the same method of use, because they are both read.

Although the method of use is useful to establish similarity between the goods and services, it is generally not sufficient on its own. For example; pharmaceutical preparations for treating skin diseases in Class 5 can take the form of creams, and they can have the same method of use as cosmetic creams in Class 3 but they are not similar.[5] Because their relevant public and intended purpose are quite different.

2.4. Complementarity

Complementarity refers to situations in which the use of a good or service is mandatory for the use of another good or service. For example, internet site hosting services (Class 42) and computer programing services (Class 42) are complementary. Because internet site hosting services cannot exist without computer programing services.

In the process of determining whether there is complementarity or not, it is not taken into account that the consumers use the related products together because of their preferences. What is important is whether the combined use of these goods or services is essential or important. For example, handbags (Class 18) and clothing (Class 25) are closely connected but not complementary, because one is not essential for the use of the other.

The mere fact that goods and services are complementary, does not automatically mean that they are similar. For example, wine and wine glasses are not similar since their intended purpose and nature are not the same. But in some cases, if complementarity exists with other factors, there may be a similarity. For example, ski boots and skis are complementary. Moreover, their relevant public and distribution channels are the same, thus they are similar.

2.5. In competition

It is considered that goods and services are in competition in cases where they can be preferred or consumed interchangeably. In this situation, goods and services are offered to the same or similar consumers and are often meant to meet the same or similar needs.

For example, wallpaper and paints are in competition because they both decorate walls.

2.6. Distribution Channel

The term ‘distribution channel’ refers to a place where goods or services are sold or provided to consumers. Therefore, the concept of the distribution channel does not include the method of sales and marketing.

Although this term is not clearly mentioned in the Canon decision, it is still an important factor. Because the consumer is more likely to think that the products or services are manufactured or presented by the same enterprise if the goods or services have the same distribution channels.

2.7. Relevant Public

The term ‘relevant public’ refers to actual or potential customers of the goods or services in question. The relevant public can be composed of:

●     the general public (public at large) or

●     a professional public (business customers or specialized public).[6]

It is important to note that the relevant public does not automatically mean final/end customers. For example, while the end users of diapers are babies, the relevant public of the goods in question are parents, that is general consumers.

The mere fact that the potential customers coincide does not automatically constitute an indication of similarity. Because it is possible for a group of customers to require goods and services of different origins and types. As an example, phones, books, and cars are all bought by the general public, but they are not similar. 

2.8. Usual Origin

The term 'usual origin' refers to the source of supply or production of goods or services. The ‘origin’ is not merely defined by the actual place of production/provision (e.g. factory, workshop, laboratory) of the goods or services, but primarily by taking into consideration who manages and/or controls the production/ provision of the goods/services.[7]

As an example, educational textbooks (Class 16) were considered to have the same origin as correspondence courses (Class 41) since course providers often distribute those products to students as support materials.

It should be noted that the enumeration of the factors above is not limited, and there is no hierarchy among them. Therefore, in addition to these criteria, there may be other factors that need to be taken into account due to the specific qualifications of each case.