Similar goods and similar services

Whether goods or services are the same, similar, “closely related” or “of the same description” as other goods or services is relevant to infringement (s 120) and to registrability (s 44).

Section 14 of the TMA provides:

Definition of similar goods and similar services

(1)  For the purposes of this Act, goods are similar to other goods:

                     (a)  if they are the same as the other goods; or

                     (b)  if they are of the same description as that of the other goods.

(2)  For the purposes of this Act, services are similar to other services:

                     (a)  if they are the same as the other services; or

                     (b)  if they are of the same description as that of the other services.

Whether goods or services offered by a respondent are the same or “of the same description” as those for which the applicant’s mark is registered is often “inherently contestable”.[1]

In MID Sydney Pty Ltd v Australian Tourism Co Ltd,[2] the Full Court[3] noted that the question of whether particular services were of the same description had not received any reported judicial consideration but that the same principles were to be applied as when considering whether goods were of the same description.

As to this, the Court referred to the decision in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[4] where the High Court said:[5]

 There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59 ; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant-comptroller elaborated on the observations of Romer J in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade …’’

The Full Court in MID Sydney, applied these principles to conclude that “the services involved in managing an hotel have different characteristics than property management services.”[6]

More recent decisions on this issue are inconsistent and difficult to reconcile. For example:

1. restaurant services have been held to be not of the same description as the provision of food or beverages to food outlets, catering services or advisory services and consultancy services relating to restaurants;[7]
2. handbags, purses and wallets were held to be not of the same description as backpacks.[8]
3. beer and wine are goods of the same description;[9]
4. “TV installation accessories including external TV antennas, none of which are set-top boxes” were held to be not goods of the same description as “digital and electronic products including televisions, video players, DVD players, decoders and cameras”;[10]
5. “photovoltaic solar electricity generator panel systems” are goods of the same description as “solar hot water systems” but not as “apparatus for heating”;[11]
6. “aluminium lidding films” are goods of the same description as “thermoplastic polymers”;[12]

In Solahart Industries Pty Ltd v Solar Shop Pty Ltd, Perram J noted that in determining whether goods are of the same description, a number of guides have been suggested. These include:

1. the nature and origin of the goods;
2. the uses made of the goods including their intended uses; and,
3. the trade channels through which the goods are bought or sold:

His Honour noted that “some doubt has been cast over the last in light of the rise of the modern department store” and added that “the phenomenon of internet retailing which rather tends to blur, almost to extinction, these kinds of consideration.”[13] He emphasised that “a sensible business judgment is called for” and that “notions of substitutability appear to be apposite.”[14]

[1] Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 at [30] per Perram J.

[2] (1998) 42 IPR 561.

[3] Burchett, Sackville and Lehane JJ.

[4] (1954) 91 CLR 592.

[5] Ibid, at 606.

[6] MID Sydney at IPR 568.

[7] Lomas v Winton Shire Council [2003] FCAFC 413 at [46] per Cooper, Kiefel and Emmett JJ.

[8] Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) (2006) 69 IPR 281 at [27]-[31] per Finkelstein J and, on appeal, (2007) 243 ALR 127 at [11] per Kenny J and [90]-[92] per Allsop J (as he then was) and Gyles J (dissenting on this point) at [191].

[9] E & J Gallo Winery v Lion Nathan Australia Pty Limited (2008) 77 IPR 69 per Flick J at [73] finding beer not goods of the same description as wine; this finding was reversed on appeal: (2009) 175 FCR 386 at [74] per Moore, Edmonds and Gilmour JJ. Special leave was not granted in relation to this issue: (2010) 241 CLR 144 at [71].

[10] Hills Industries Ltd v Bitek Pty Ltd (2011) 90 IPR 337 at [138]-[140] per Lander J.

[11] Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165 at [28]-[36] per Perram J.

[12] Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 at [99] per Beach J.

[13] Solarhart at [32].

[14] Ibid.