Illustrative Cases for Similarity of Goods And Services

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Reading Time: 7 minutes| (Last Updated On: April 26, 2019)

Illustrative cases similarity goods services

Illustrative cases similarity goods services

  1. In Colman Ld.’s Appl., It was held by EVE, J., that mustard and semolina, though commonly sold in the same shop over the same counter, were not goods of the same description, having regard particularly to the divergence in use and method of preparation when they respectively reached in the kitchen.
  2. In Darwins Ld.’s Appl., registration of the mark “MOREX” in class 6 in respect of a specification comprising “Steel” and certain machine tools and hand tools wholly or mainly of metal, was opposed by the proprietors of the trademark “MORREX” registered in respect of wire and of the trademark “REX” and “MORRISFLEX” registered in respect of goods including machines and parts of machines for use in surfacing metal goods. It was held that steel on the one hand and steel tools on the other hand were not gods of the same description, and that rotary wire brushes (for use in machine tools), which were included in a registration in respect of wire brushes, were goods of the same description as certain metal cutting tools.
  3. In Jellinek’s Application, an application to register the device of a panda together with the word “Panda” in class 3 in respect of shoe polish was opposed by the proprietors of a similar “Panda” mark registered in respect of shoes. The Registrar held that shoes and shoe polish were not goods of the same description though commonly sold in the same shops, and allowed the application. An appeal to the Court was dismissed. It was held that shoe polish and shoe differed from each other from whatever aspect, nature, use or channel of trade – they were regarded. Rommer, J., observed that the two goods differed in their nature widely, their respective uses were different and that the mere fact that polish was applied to boots and shoes for the purpose of leaning them was quite irrelevant for the purpose, and that regard must be had to the trade channels through which the goods respectively were bought and sold.  
  4. In British Sugar v. James Robertson, JACOB, J., observed that the considerations the Court must have in mind with reference to the expression ‘similar goods’ in Sections 5(2) and 10(2) of the U.K. Act, 1994 are similar to those arising under the U.K. Act, 1983 in relation to ‘goods of same description’ in Sections 1 and 12(1). The following factors must be relevant in considering whether there is or there is not similarity:
    • the respective uses of the respective goods or services;
    • the respective users of the respective goods or services;
    • the physical nature of the goods or acts of service;
    • the respective trade channels through which the goods or services reach the market;
    • In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
    • the extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.
  5. Applying the above tests to the case, the Court found that the two products spread and sauce or syrup to some extent have the same use, but broadly in practice have different uses. They are hardly in direct competition and consumers will find them in different places in supermarkets. Their physical nature is somewhat different, the Robertson produce being hardly pourable and really needing spooning out of the jar whereas the British Sugar product is meant to be poured out of the small hole in the plastic top. Moreover, it seems that the purposes of market research the two products are regarded as falling within different sectors. Taking all these things together, it was held that the spread is not be regarded as similar to the dessert sauces and syrups of the registration. There was no infringement.
  6. In Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. use of common trademark ‘CHARMINAR’ for quiwam and zarda by petitioner and for cigarettes by the respondent, both goods fell under the classification “manufactured tobacco”, each of the products is a separate and distinct article of use having separate of use having separate characteristics. It was held that “the class mentioned in the IVth Schedule may subsume or comprise a number of goods or articles, which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance”. Accordingly, rectification of the registration of trademark in favour of respondent limiting the goods to ‘cigarettes’ (even though the specific goods were not specified in the IVth Schedule) was held to be justified.
  7.   In Australian Wine Importers’ Tm., an application to register a trademark consisting of the device of a suspended sheep and the words “Golden Fleece Australian Champagne” in respect of witness was opposed by the registered proprietor of two trademarks each containing the representation of a sheep with golden fleece and the words “Golden Fleece” with the addition of the words ‘Old Jamaica Rum’ in one case and ‘Pure Old Scotch Whisky’ in the other. It was held that if wines were of ‘the same description of goods’ as spirits within the meaning of Section 72 of the Act of 1883, the registration of the applicant’s mark was prohibited by that section, and even if they were not, the similarly of the marks was such as, having regard to the nature of the applicant’s and opponent’s goods, was likely to induce the public to believe that the applicant’s wines were the goods of the opponents. The decision indicates that too narrow a construction should not be put on the words “same description of goods” having regard to the very different methods by which wines and spirits are produced.
  8. In Gutta-Percha & Rubber Manufacturing Co. of Toronto Ld.’s Appl., an application to register the device of a Maltese Cross in class 38 for boots and shoes made wholly or partially of India-rubber footwear, not including garters or leggings, was opposed by an English Company who had registered a Maltese Cross in class 40 for India rubber goods not included in any other class. The opponent’s trademarks was stamped on all goods they manufactured. They did not manufacture India-rubber footwear, but they sold such goods although not stamped with their trademark. It was held that for the purpose of registration India-rubber boots and shoes were goods of the same description as other India-rubber articles, and that the applicant’s mark was calculated to deceive. An appeal was dismissed by the Court of Appeal.
  9. In Egg Products Ld.’s Appl., registration of the word “EGALL” in respect of dried eggs was opposed by the proprietors of a registered trademark ‘EGROL’ registered in respect of custard powder etc. The application was refused on the ground that the applicant’s mark was calculated to deceive, the two goods in question being of the same description. SARGANT, J., observed thus: It is, no doubt, the case that ‘EGROL,’ although registered for custard powders, blancmange powders, banking powders and egg powders, has hardly any use at all, I think has no use, as an egg powder. It is, as a matter of fact, a substance which does not comprise eggs, but is an egg substitute for the purposes of custard powders and egg powders; while ‘EGALL’ is an actual egg product, and is primarily used in lieu of eggs, although it is also, and I think this is not immaterial, as is shown by the directions placed on the packets containing it, adopted to be used for the purposes of a custard powder………. Although the substances may not be precisely the same, the evidence is that they are of the same class of substance, sold in the same shops, over the same counters, and sold in small quantities.”
  10.  In McDowell’s Appl., registration of the word ‘NUVOL’ in respect of illuminating, heating or lubricating oils was opposed by the owners of the trademark ‘NUJOL’ registered in respect of medicinal preparations for human use. The opponents had a large sale in oils, but except ‘NUJOL’ all their oils in Great Britain were sold by their sole distributor, from whom the applicant very largely purchased his oils. The applicant’s oil was sold in barrels or drums, and not in smaller quantities, while the opponent’s preparation was sold in comparatively small quantities in bottles or tins. Registration was refused by the Court of Appeal, and a further appeal to the House of Lords was dismissed. LORD CAVE referred to the fact that the two goods in question were oils and consisted of petroleum, the only difference being in the degree of refinement.
  11. In Colman Ld.’s Appl., it was held by EVE, J., that mustard and semolina, though commonly sold in the same shop over the same counter, were not goods of the same description having regard particularly to the divergence in use and method of preparation when they respectively reached the kitchen.
  12. A difference in size, and price for that matter, may be as much an indication of the nature of goods as other characteristics; the matter falls to be determined in business or practical sense. Registration of the mark ‘Seahorse’ for inboard marine engines was opposed by the proprietors of the registered trademark ‘Sea Horse’ for outboard motors. Registration of the mark was permitted because the goods were held to be not of the same description.
  13. A difference in size, and price for that matter, may be as much an indication of the nature of goods as other characteristics; the matter falls to be determined in business or practical sense. Registration of the mark ‘Seahorse’ for inboard marine engines was opposed by the proprietors of the registered trademark ‘Sea Horse’ for outboard motors. Registration of the mark was permitted because the goods were held to be not of the same description.
  14. Confectionery cigarettes and tobacco cigarettes are not goods of the same description as the nature and use of the goods are different. Non-medicated confectionery and confectionary cigarettes are goods of the same description.
  15. The opponents’ registered mark ‘ACE’ was in respect of electric/fluorescent electric lamps and mercury vapour and sodium vapour lamps for lighting purposes. The applicant’s too applications were for registration of the mark ‘ACEC’ (i) for electric infra-red heating lamps, mercury vapour lamps and electrical ultraviolet lamps-all for surgical or curative purposes; x-ray tubes for medical treatment; and (ii) electric heating and electric lighting apparatus domestic electrical appliances. While he opponent’s’ goods and the applicant’s goods under (ii) above were held to be same goods, the goods under item (i) above were held to be not the same goods but were goods of the same description as those covered by the opponent’s’ registration because. 
    • of their different uses the opponent’s’ goods were used for purposes other than illumination i.e., surgical purposes;
    • the nature of goods though somewhat similar (both emit rays but says from applicant’s lamps were not visible), the trade channels were the same only where large dealers were concerned. The opponent’s specialised lamps were not sold by small shops which sold ordinary electric lamps.
  16. In Lyons (j) & Co. Ld.’s Appl., although there was no direct decision on point their Lordships of the Court of Appeal were inclined to hold that “ice cream” and “table jellies” were goods of the same description.
  17. N Arumugam v. Sayed Abbas – A trader of chewing tobacco registration his mark as “THANGA BASPAM”. Subsequently, another manufacturer of chewing tobacco sought registration of his mark as “THANGAPAUVAN” meaning “gold sovereign” tobacco. The design of the marks was quite different. There was no visual similarity between the two Registration was opposed on the ground that they were phonetically similar and resembled each other. Registration was not allowed. The use of the word was likely to mislead people. An average person with imperfect memory was likely to be misled if these two marks were allowed to be used in the market. Very few people would pause to consider the difference between “THANGABASPAM’ and ‘THANGAPAUVAN’.

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