Sections
Policy and Advocacy
Policy and Advocacy
Board Resolutions
Use of Classification in Likelihood of Confusion Analysis





September 24, 2010

Sponsoring Committee: Proof of Confusion Subcommittee of the Enforcement Committee


Proposed Resolution

WHEREAS, there remains a wide disparity among jurisdictions as to whether classification is taken into account in the analysis of likelihood of confusion in registration, opposition and infringement proceedings, with some jurisdictions only considering the specific goods and services, while others look to classes;

WHEREAS, the Trademark Law Treaty and the Singapore Treaty on the Law of Trademarks attempt to harmonize classification procedures and to clarify that classification has no legal significance by (1) requiring contracting parties to conform to the Nice Agreement Concerning the International Classification of Goods and Services, and (2) providing that goods or services may not be considered as being similar to each other, or dissimilar to each other, on the ground that they appear in the same or different classes; and

WHEREAS, the continued consideration of classification in confusion analysis by trademark offices and courts results in inconsistency in decisions and uncertainty for trademark owners;

BE IT RESOLVED, that it is the position of the International Trademark Association that classification should not be taken into consideration regarding the likelihood of confusion analysis by trademark offices and courts.


Background

Despite the intent that the Nice Agreement on the International Classification of Goods and Services is to be purely an administrative tool for trademark offices without any legal significance, trademark owners are impacted by disparate classification systems and the denial or loss of trademark rights due to the consideration of classification in the likelihood of confusions analysis by trademark offices and courts. To address these issues, INTA played a significant role in the negotiation and eventual coming into force of the Trademark Law Treaty (1994) and the Singapore Treaty on Trademark Law (2006), both of which require contracting parties to conform to the Nice Agreement. Importantly, these treaties state that goods and services may not be considered as being similar or dissimilar to each other if they appear in the same class or in a different class, thus indicating that the classes have no legal significance. However, neither treaty specifically addresses the issue of how classification impacts likelihood of confusion analyses. INTA attempted to clarify this issue within its Guidelines on Trademark Examination which states:

8.1.1 Comparison of Goods and Services
Another factor in determining whether granting the registration of similar marks is likely to lead to confusion among the purchasing public is a comparison of the similarity or dissimilarity and type of goods or services described in a located mark.

However, there should be no per se refusal to register because two similar marks are to be used on or in connection with goods/services which are similar or are in the same or related classes. In a fair evaluation of all relevant confusion factors, including actual conditions in the marketplace, the factor of similar or related goods/services may not be dispositive.

In a 2006 report to the Board, the Relative Examination Subcommittee of the Emerging Issues Committee also addressed the issue:

In evaluating whether two or more trademarks are confusingly similar, it is necessary to examine the nature of the goods or services, and for that reason, it is never sufficient to find that the trademarks are registered in the same class. To determine likelihood of confusion, we recommend that the examining office always should look at the specific category of goods or services concerned and not simply to the class number into which the goods are classified. Trademarks covering different categories of goods in the same class (e.g., paper versus aquaria in International Class 16) do not become more or less likely to cause confusion simply because the goods in question are classified in separate classes or in the same class. On the other hand, goods that are classified in different classes might be considered to be the same or similar goods, and might therefore be likely to cause confusion. An example is “cotton wool for cosmetic purposes” in International Class 3, which might be considered to be at least similar to “wadding for medical purposes” in International Class 5. This supports the theory that in order to determine likelihood of confusion, it is necessary to look at the goods in question, and not only to which class they happen to be classified in.
Given the continuing difficulties that trademark owners face in some jurisdictions due to different approaches to classification and its impact on trademark registration and opposition and infringement cases, the Proof of Confusion Subcommittee undertook a survey to assess the extent to which classification of goods and services is taken into consideration as part of a likelihood of confusion analysis by trademark offices and courts.

The survey covered selected jurisdictions of each continent (Germany, United Kingdom, European Union, France, Italy, Russia, United States, Brazil, Australia, South Korea, India, Malaysia and Singapore). Key findings from the survey relating to the issue of confusion analysis were:

  • Applicants of trademarks must or at least should identify goods and services for which they seek protection with their trademark when filing the trademark application. In most countries, applicants also are required to classify their goods and services in classes of the Nice Classification. However, the standards of how to classify goods and services are not uniformly followed:
  • The EU’s Office for Harmonization in the Internal Market (OHIM) and a number of European countries regard class headings as sufficient to identify the goods and services for which protection is sought.
  • The U.S. regards class headings as insufficient to identify the goods and services for which protection is sought and requires specific details to identify specific goods and services. Therefore, the goods and services of a trademark in the U.S. are not very broad in comparison to goods and services of a Community Trade Mark (CTM).
  • In both opposition proceedings and federal court actions in the United States, it has been held that the classification of goods and services has no bearing on the determination of likelihood of confusion. The purpose of classification of goods is for internal administration and convenience at the Patent and Trademark Office. Classification does not limit or extend a registrant's rights.
  • In Australia, classification is used as a means to assist examiners in restricting a database search to classes regarded as being relevant to each other while examining a trademark application for a likelihood of confusion with a pre-existing application or registration. However, classification of goods and services is otherwise irrelevant to the question of confusion with pre-existing trademarks.
  • In many countries, in particular European countries, although classification of goods and services might be an indication of similarity with respect to likelihood of confusion, the specific goods and services of two trademarks are compared to each other in opposition proceedings with TMOs and in court proceedings.
  • In very few countries classification is used in examination of likelihood of confusion in a class-against-class analysis.
    • The Brazilian Office bases its decision on such an analysis, usually restricting the analysis to the same class. However, it appears that such an analysis is not a strict rule since decisions exist relating to examination of classes and the specific goods/services in the pertinent records.
    • The Korean Intellectual Property Office (KIPO) uses a subclass system. If goods and services which are compared to each other fall in the same subclass, they are considered similar. If they fall in different subclasses, the opposite is true. This leads to great difficulty in overcoming refusals where the goods are actually unrelated, incompatible or non-competitive or would not lead to confusion in the marketplace. The problem is compounded in that KIPO will not give any weight to Letters of Consent. However, in opposition and infringement proceedings, KIPO or the courts may not follow the subclass system. The actual nature of the goods and services are compared to each other.
In sum, the survey revealed that classification is handled differently in many countries. The standards of how to classify goods and services are not harmonized. There is a high risk that goods and services which are actually identical or similar, but which are classified under different classes due to the different standards, are not regarded as identical or similar.

Therefore, the Proof of Confusion Subcommittee recommends that the Board approve the above resolution that classification should not be taken into consideration regarding the likelihood of confusion analysis by trademark offices and courts.