Analyses: The Concept 'Similar Goods' in Trade-mark Law
| Jurisdiction | South Africa |
| Published date | 25 May 2019 |
| Date | 25 May 2019 |
| Author | Roshana Kelbrick |
| Citation | (2009) 21 SA Merc LJ 535 |
| Pages | 535-545 |
Analyses
The Concept ‘Similar Goods’ in
Trade-mark Law
ROSHANA KELBRICK
University of South Africa
1 Introduction
Wine and wine glasses are not similar goods, but medicine and cool-drinks
may be. Clothes and suntan lotions are similar goods, but toffee-flavoured
spread and toffee-flavoured ice-cream toppings are not. Are these findings of
similarity (or dissimilarity) the results of the facts of each case, or of the
terminology used in the legislation of the different jurisdictions? Here I shall
discuss the terminology used in the European Community Directive, and the
South African and the United Kingdom legislation, and then analyse relevant
decisions in these jurisdictions. (For the sake of brevity, I shall refer only to
similar goods, unless a service mark is in issue.)
The classification system is an essential component of trade-mark law. All
marks are applied for and registered in one or more of a variety of goods and
services classes. The classification system and the contents of each class are
the same worldwide and determined by the International Classification of
Goods and Services drawn up under the Nice Agreement of 1957. In most
jurisdictions, infringement protection used to be limited to the goods for
which the mark was registered, and so marks were registered with broad
specifications to expand this protection as far as possible. But the fact that
protection was limited to the specific goods for which the mark was registered
meant that the same mark could be used by different proprietors, provided that
this was in respect of different goods.
This situation was altered by the EC Directive (First Council Directive
89/104 of 21 December 1988 (‘the EC Directive’), since repealed by the
European Community (EC): Marks, Directive (Consolidation), 22/10/2008,
No 2008/95/CE). One of its aims was to ‘reduce the total number of trade
marks registered and protected . . . [and] to require that registered trade marks
must actually be used’ (8th recital). To achieve this, the focus was shifted
from granting protection only for the extent of registration, to protecting
marks against use also on similar goods, but then subject to the requirement
that specifications be limited only to those goods on which the mark was
actually used.
535
(2009) 21 SA Merc LJ 535
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