It is important to bear in mind that this classification is useful for administrative purposes and that the fact that some goods (or services) are included in the same class is not necessarily an indication of their similarity.
For example in class 9 we find very different products, like “clothing for protection against accidents”, “amplifiers”, “calculating machines”, “eyeglasses”. Through a trademark search in this class, we could find that the word that we want to register as a trademark for “eyeglasses”, has already been registered in class 9 for “calculators”. In this case it would be identical word for products in the same class; however, it seems very difficult to affirm a risk of confusion between such different products, despite being placed in the same class.
In the same way, the fact that goods (or services) are included in different classes does not necessarily imply recognition of their diversity. For example, beer is in class 32, while wine is included in class 33. Nevertheless, according to the EUIPO Guidelines for examination of European Union trademarks,
“there is a similarity between different alcoholic beverages in class 33, as well as between the broad category of alcoholic beverages and beer in class 32”.
For this purpose, we invite to take into consideration article 33, 7) of the European Union Trademark Regulation n. 2017/1001, according to which:
“Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification”.
This principle has also been reaffirmed by the Italian Board of Appeals (judgement 14714, appeal n.7339) which rejected a trademark application in class 43 (services for providing food and drink; temporary accommodation) because it considered the trademark in class 43 similar to an earlier mark for port services in class 39 (transport; packaging and storage of goods; travel arrangement).
The Board of Appeal disagreed the examiner’s statement according to which there is not a similarity between the services in class 43 and those in class 39. On the contrary, the Board of Appeal stated that:
“through an evolutionary interpretation of the classes, otherwise locked in their original fixity, the activities related to the port, as evolved and developed in the reality perceived by everyone, not only do not exclude but also normally include the catering activities, in many different forms (self-service; taverns or restaurants; bars, clubs, pubs, etc.). Therefore, it cannot be excluded the confusion only by reason of a formal diversity of classes, for which registration is claimed, without performing an analysis on the historical and evolutionary events of the activities and port services, as shown in the last decades of economic and social life of the West”.
All the aforesaid help us to understand the importance of discussing the matter with an IP expert, who will inform you about the right choice for your brand.