6 Jul 2022 Stéphane Bellec

The similarity of products of different classes in trademark law

The classification of trademarks has an administrative scope and serves to organize the filing of the trademark. The Court of Appeal of Aix-en-Provence recalled that clothing (class 25) could be considered similar to perfumes and cosmetics (class 3). The similarity of products of different classes is assessed by taking into account the diversification of the companies.

Similarity of goods and services in trademark law

In this case, the company Chanel, owner of the trademark GABRIELLE for perfumes and cosmetics in class 3 opposed the registration of a trademark GABRIELLE for clothing in class 25.

On September 23, 2021, the Court of Appeal of Aix-en-Provence approved the decision rendered by the Director of the INPI (Institut national de la propriété industrielle). It rejected the registration of the word mark GABRIELLE: the likelihood of confusion must be assessed globally. The similarity between the designated goods and services, in particular due to the diversification of the clothing and ready-to-wear sector, as well as the strictly identical nature of the signs, and this while the sign GABRIELLE is endowed with a strong distinctiveness, justifies the rejection of the registered trademark.

This case is part of a traditional jurisprudence that recognizes the diversification of businesses. In particular, in the Haute-couture and ready-to-wear sectors. Companies often offer, alongside clothing, perfumes, jewelry or bags. As early as 1987, the Paris Court of Appeal recognized this diversification. In the BULGARI case, the court admitted the similarity of jewelry and clothing.

Some examples of similar products and services

While many decisions concern classes 3 (perfumes and cosmetics), 14 (jewelry), 18 (leather goods) and 25 (clothing), other sectors are affected. The courts apply the principle of speciality flexibly in the luxury sector, and some decisions also note the trend towards diversification into other sectors.

The European Union Court decided on February 15, 2011, in a NORMA case the similarity of goods in class 33 (wine and alcoholic beverages) and services in class 42 (restaurant services, now in class 43). The services and goods at issue, despite the differences in their nature, purpose and use, have a certain degree of similarity, linked to their complementarity.

More recently, the European Court of Justice has accepted the similarity between cheese and restaurant services. This is the decision of April 21, 2021 on the GRILLOUMI trademark. The similarity of goods and services is recognized when there is a close link between them, one being indispensable or important for the use of the other. Consumers may therefore think that they come from the same company. In this case, the opponent was the Foundation for the Protection of Cypriot Cheese Halloumi. The European Commission has registered Halloumi cheese as a protected designation of origin (PDO) on April 12, 2021.

When filing a trademark application, the choice of the goods and services claimed as well as the protected classes is made in consultation with your trademark attorney. This is part of the lawyer’s role as an advisor in the development of an effective protection strategy for a trademark portfolio. Beyond the filing, the interest of monitoring filings beyond the claimed classes is also obvious.

Stéphane Bellec avocat propriété intellectuelle