26.4. Similarity of goods and services

The terms “similar goods” and “similar services” are defined in subsections 14(1) and 14(2) of the Trade Marks Act 1995. 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 any similarity between the trade marks is to deceive or confuse. 

Classification is not the determining factor in considering the similarity of goods or services. The Full Court in Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, in considering whether ‘non-alcoholic beverages’ in Class 32 encompassed coffee in Class 30. The court held at [132]: 

Although for administrative purposes coffee beverages fall to Class 30, it does not follow that a claim to “non-alcoholic beverages” nominated in Class 32 in the specification of the “blocking” registration cannot, as a matter of description, include coffee beverages where such goods are part of a single, broad claim to all non-alcoholic beverages. In any event, the classification of goods and services according to classes is primarily a matter of convenience in administration (for example, in facilitating searches). The nomination of a class for particular goods is not decisive as to the scope of a given registration:  Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Coleman (Australia) Ltd v Boden35 [1945] HCA 12; 70 CLR 84 at 90; Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [43] – [44]. The question is whether, from a business and commercial point of view, the description “non-alcoholic beverages”, as used in the specification of the “blocking” registration, would be understood as including non-alcoholic coffee beverages. Appreciating the possible permutations discussed above, “coffee” as a beverage would be understood as being a good that falls within the description “non-alcoholic beverages”. 

The extent of each claim for goods and services is thus determined by the ordinary scope of the words used.  

​​​​​​​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 Therefore the same tests as those applied under section 33(1) of the repealed Act hold under the Trade Marks Act 1995. 

In Jellinek's Application (1946) 63 RPC 59 (Jellinek), 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 Beck, Koller & Company's Application (“Plio”), 64 RPC 76 at page 78, the Assistant Comptroller expanded 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 was confirmed in  John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372, and later by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82 (at [5]).  

4.2 Comparison of services

Subsection 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 s 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 the factors under consideration must be the nature of the services themselves, their uses and the trade channels through which they are provided.

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.

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4.3 Closely related goods and services

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

Guidance can be found in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (Metro). This case was a decision of the Full Court on an appeal from the first instance decision by Wilcox J.  In the lead judgement, 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”. 

French J subsequently outlined an approach that somewhat conflated the issues of the similarity of trade marks and the relationship between goods and services, saying 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 Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512 (Enagic) Charlesworth J provided additional guidance on how the phrase closely related is to be interpreted at [33]: 

The phrase “closely related” is to be interpreted having regard to the objects of the TMA, which can be discerned in part in the definition of a trade mark as an indicia of the origin of goods or services. Section 44(2) is plainly intended to address the mischief that may be created where two marks are the same or deceptively similar. It recognises the potential for confusion in the minds of consumers as to the origin of goods in respect of which a mark is registered or sought to be registered and the origin of services in which an identical or a deceptively similar mark is registered, or sought to be registered as the case may be. The more closely related the goods on the one hand and the services on the other, the greater the potential for confusion as to whether they originate from the same person. Whether the relevant services and the relevant goods are “closely related” is to be assessed in that context and in a commercially sensible way, having regard to all legitimate uses of the Opposed Mark. 

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.

Principles to keep in mind when assessing whether goods and services are closely related include: 

• The issue must be considered in the context of a presumption of registrability. (Metro)  

• The question is whether goods and services are ‘closely related’, not whether they are ‘related’. (Metro)  

• The relationships between goods and services that are closely related may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. (Metro)  

• A trade mark is likely to cause confusion if the ordinary person entertains a reasonable doubt about whether the goods and services come from the same source. (Metro)  

• This is a practical exercise that considers the degree of similarity between the signs, the relationship of the goods and services, the context of use, and the character of prospective purchasers. (Metro)  

• The full extent of the rights must be considered. (Enagic)   

• Confusion is more likely to arise where services necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods. (Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143 (Caterpillar))  

• Consideration of whether specific goods and services are “closely related” is an evaluative exercise whose outcome is likely to depend on evidence. (Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487 (‘Ragopika') ) 

4.3.1 Retail, wholesale, and distribution services v goods

It is common practice for goods to be wholesaled/distributed and/or retailed by an entity other than the original manufacturer or brand owner. However, the fact that a good may be sold through wholesale or retail channels does not necessarily render such goods as being closely related to wholesale or retail services. The question of whether goods and the service of providing their wholesale or retail sale are closely related must be considered in the context of the risk of confusion, according to the ‘one practical judgement’ principle stated by French J in Metro.  

In Caterpillar Lockhart J observed the following regarding the risk of confusion between goods and services: 

It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other. 

And later at [522]: 

Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods. 

The primary judge in the Metro case, Wilcox J, discussed the examples provided by Lockhart J in Caterpillar: 

There are extremely close associations between the sale of data processing equipment and the provision of programs for its operation, the sale and sewing of curtains and the sale and tailoring of clothes.  Because the relevant service is so specialised, and focused on the particular goods, it would be natural for any member of the public to treat a similarity of name as being an indication of a link between the origin of the goods and that of the service.  At the other extreme, the use of even the same name, by traders in different industries, would not usually cause members of the public to assume a link between the traders. 

Wilcox J considered the relationship between Meat, fish, poultry, and game including smallgoods and the retailing and wholesaling services and the goods sold in these outlets did not lie at either of the extremes discussed above, and having regard to the differences in the marks under comparison, was not satisfied confusion was likely. 

Since the Metro decision business practices have evolved and the market realities have changed. Where once there was more often a clear delineation between manufacturers and retailers it is now commonplace (particularly with the rise of online commerce) for manufacturers to directly sell their own products while also making them available through other retailers. Likewise, retailers in some industries commonly offer their own branded goods alongside similar products from other traders. This environment fosters a consumer expectation that goods and the retail sale of those goods have a higher likelihood of being attributed to the same trade source (provided sufficiently similar trade marks are used in connection with each).   

Applying the one practical judgement principle endorsed by the Federal Court, while each case must be considered on its merits, generally speaking, the use of a substantially identical trade mark, (or a deceptively similar trade mark approaching the level of substantial identity), in relation to goods which are generally sold through retail/wholesale channels, and retail/wholesale services for selling such goods, would give rise to a real, tangible danger of confusion. In such cases, a ground for rejection under s 44 will be appropriate. The potential for confusion will be reduced where the trade marks are merely deceptively similar, but where the differences between the respective trade marks and goods/services, when considered as a whole (i.e. making one practical judgement), renders confusion unlikely.   

In deciding whether a risk of confusion exists between trade marks respectively claiming the retail, wholesale, and distribution of a good and the good itself, consideration should be given to the degree of similarity in the marks under comparison, the closeness of the relationship between the goods and the services, the context in which they are traded, and the character of prospective consumers.   

Table of decisions - Retail wholesale, and distribution services v goods 

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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 Metro 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. When comparing goods or services of two trade marks to determine whether they are similar or closely related, the examiner cannot take into account what each trade mark is actually used for (where the examiner has knowledge of such facts).  

In Re Smith Hayden and Co’s Application (1946) 63 RPC 97, Evershed J said 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. 

(note that this case refers to a court being satisfied there will be no likelihood of deception or confusion. However, a presumption of registrability applies to s 44, meaning that an examiner must be satisfised there will be deception or confusion).  

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. For example, broad claims such as ‘computer software’ or ‘retail services’ must be interpreted to include computer software for any purpose, or retail services relating to any goods.