26.4. Similarity of goods and services

Date Published

The terms “similar goods” and “similar services” are defined in subsections 14(1) and 14(2) of the Trade Marks Act 1995. They are directly equivalent to the expressions “same goods” or “goods of the same description” and “same services” and “services of the same description” which were used in section 33 of the repealed Act. The similarity of trade marks should be considered together with the similarity of the goods or services. The closer the goods or services are to each other, the more likely similar trade marks are to be citable.

Classification is not necessarily the determining factor in considering the similarity of goods or services. Two similar trade marks may be registrable in the one class for goods which have no nexus of similarity. For example, the same trade marks for “incubators” in Class 7 and “machine tools” also falling in that class can co-exist. An example of services for which the same trade marks could co-exist would be “repair of watches” and “demolition of houses” both of which fall in Class 37. On the other hand, goods or services appearing in different classes could well be similar goods or similar services.

The criterion is ultimately whether the respective goods or services or sets of goods or services covered by the trade marks under consideration, include goods which are similar, services which are similar or goods and services which are closely related.

​​​​​​​4.1 Comparison of goods

Sub-section 14(1) of the Act defines goods as being similar to other goods if they are the same as those other goods or if they are of the same description as those other goods. Therefore the same tests as those applied under section 33(1) of the repealed Act hold under the Trade Marks Act 1995. A number of tests have been established.

In Jellinek's Application (“Panda”), 63 RPC 59, Romer J. set out the following matters for enquiry in assessing whether goods are of the same description:

  • the nature of the goods;
  • the respective uses of the articles;
  • the trade channels through which the commodities are respectively bought and sold.

These are the primary criteria. However, it is unlikely that any single factor is conclusive in itself.

Other factors which may need to be considered are:

In Beck, Koller & Company's Application (“Plio”), 64 RPC 76 at page 78, the Assistant Comptroller enlarged on the factors set out by Romer J. as follows:

  • the nature and characteristics of the goods;
  • the origin of the goods;
  • the purpose of the goods;
  • whether the goods are usually produced by one and the same manufacturer;
  • whether the goods are distributed by the same wholesale houses;
  • whether the goods are sold in the same shops, over the same counter, during the same season and to the same class or classes of customer;
  • whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

The above matters which are to be considered when determining whether goods are of the same description have been confirmed in cases such as John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372.

4.2 Comparison of services

Sub-section 14(2) defines services as being similar to other services if they are the same as those other services or if they are of the same description as those other services. Therefore the same tests as those applied under sub-section 33(2) of the repealed Act in comparing services apply under the Trade Marks Act 1995. Service trade marks have been registered in Australia since 1979, and by analogy with "similar goods", the term "similar services" encompasses services which would reasonably be expected to be provided by one trader under the same trade mark. By extending the principles in Jellinek's Appn (1946) 63 RPC 59 (Ch. D) the factors under consideration must be the nature of the services themselves, their uses and the trade channels through which they are provided.

The tests to determine “similar services” will be similar to those for determining “similar goods”. The examiner will have to consider:

  • the nature and characteristic of the services;
  • the origin of the services;
  • the purpose of the services;
  • whether the services are usually provided by one and the same business or person;
  • whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and
  • whether the services are regarded as the same by those who provide them.


4.3 Closely related goods and services

The test for closely related is not explicitly defined in the same manner as goods and services of the same description.

Guidance can be found in the Registrar of Trade Marks v Woolworths [1999] FCA 1020, where French J said at [37]: 

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. 

The consideration of whether goods and services are closely related is summarized in the Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 by French J at [40].

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question... Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or cause confusion

In assessing the likelihood of deception or confusion in a case of goods and services, consideration should be given to consumer expectations. Factors which influence consumer expectations include whether the services are performed upon, in relation to, or by means of certain goods. Consideration should also be given to the marketplace realities and surrounding circumstances including:

  • the circumstances in which the marks will be used,
  • the circumstances in which the goods or services will be bought and sold,
  • and the character of the consumers of the goods and services.

4.3.1 Retail services v goods

The primary judge in the Metro case Justice Wilcox, took the view that the connection between retailing and wholesaling services and the goods sold in these outlets was generally not sufficiently strong to warrant raising section 44 grounds for rejection in most situations.

In deciding whether a risk of confusion exists between the retail and wholesale of a good and the goods being sold, consideration should be given to whether there is a strong rationale to conclude that customers have come to expect that the particular goods and their retail or wholesale typically originate from the same source with consideration of the above principles and the similarity of the marks.

​​​​​​​4.3.2 Custom manufacturing (specific) v goods

Generally, custom manufacturers provide a point to point interaction with customers that involves both the goods and the services related to them. In cases where there is a sufficient degree of similarity between trade marks claiming a good and the custom manufacture of that good, a ground for rejection is likely to be appropriate.

​​​​​​​4.3.3 Installation, maintenance, and repair (specific) v goods

This consideration was touched on in the Registrar Of Trade Marks v Woolworths [1999] FCA 1020 by French J at [38]

The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

In cases where there is a sufficient degree of similarity between trade marks claiming a good and the repair, maintenance, and repair of that good, a ground for rejection is likely to be appropriate.

​​​​​​​4.4 Notional Use

Notional use refers to the assumption that a trade mark will be used in a normal and fair manner for all the goods and/or services covered by the application or registration. In the context of s 44 of the Trade Marks Act 1995 this means that it is the statutory rights of the trade marks that are compared rather than actual use.  

In Re Smith Hayden and Co’s Application (1946) 63 RPC 97, at 101: 

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration. 

This means that when comparing trade marks, regard must be given to any goods and services that could reasonably be expected to fall within the goods and services specified in the application or registration. In assessing the similarity of goods and services, specifications should be considered in a “normal and fair manner” as noted above. The terminology in claims is therefore important in determining the scope of a particular application/registration.

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