When you create a trademark you have to be careful that it is not not identical with or similar to earlier trademarks for identical or similar goods or services.
We are aware, in fact, that law does not allow to use and register trademarks which are identical with or similar to earlier trademarks for identical or similar products and/or services.
At an empirical level, it is usually easy to understand when we are dealing with two identical products. Often the doubt is: how can we understand if two products are similar?
Nice Classification is not always a valid evaluation criterion
It is erroneously believed that the fact that the products are in different classes allows us to be able to create an identical or similar trademark. It is wrong!
It is important to know that Nice Classification serves purely administrative purposes: therefore, products and services cannot be considered similar only because they are placed in the same class, as well as they cannot be considered dissimilar because they are in different classes.
Some classes of the Nice Classification are very wide and include completely heterogeneous products. How can we believe that there is a similarity between glasses and fire extinguishers? Yet, they are both placed in class 9 and this fact help us to understand how belonging to the same Nice class cannot be considered a proof, but at most a simple indication, of the similarity between the products.
Of course, the reverse rule is also true, namely the fact that the products are placed in two different classes is not sufficient to state the diversity of the products. Meat extracts and spices are considered similar, but meat extracts are in class 29 and spices in class 30.
The matter of similarity was examined by the EU Court in the famous judgment “Canon” (C-39/97, judgment of 29 September 1998), in which the following principle was stated:
“in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary”.
Which criteria in the assessment of similar products
In short, we can say that the comparison of 2 or more similar products takes into consideration the following criteria:
- The nature of the products: they are their essential qualities or characteristics. Actually, it is the answer to the question: what are these products? How are they made? Which materials are made of?
- Their intended purpose: it answers the question: what need do these goods/services satisfy?
- Their method of use: the question is: how are these goods used?
- Complementarity: there is a complementary if there is a close connection between the goods (or services), in the sense that one is indispensable or very important for the use of the other
- In competition: goods are in competition with each other when they serve the same or similar purpose and are offered to the same actual and potential customers
In addition to these criteria, the following three are usually also used:
- Distribution channels: they must be intended as the places of distribution. For instance: are the goods sold in the same shops?
- Relevant public: the actual and potential customers of the goods in question
- Usual origin of the products: which kind of company does produce the products in question?
We hope to have given you some ideas to understand how to assess the similarity between the products.
However, it is important to take into consideration that not all the listed factors have the same weight and the assessment must always be formulated on the specific case.
In light of the above, if you need to assess the similarity of your product with another than has a similar trademark, we suggest to ask for an advice to an expert in IP field who can, if necessary, advise you on how to proceed in defense of your trademark.