SIMILARITY OF GOODS AND SERVICES - Complementarity -

1. SIMILARITY OF GOODS AND SERVICES- Complementarity -

2. IDENTITY AND SIMILARITY OF SIGNS • The following signs shall not be registered as trademarks (Article 5 Para. 1 Item 8 and 9, TL): • sign which is identical with an earlier trademark registered for identical goods or services; • sign which is identical with, or similar to another person‘s earlier trademark for the identical or similar goods or services, and because of that similarity or identity there is likelihood of confusion on the relevant part of the public, which includes the likelihood of its association with the earlier trademark.

3. SIMILARITY OF GOODS AND SERVICES • According to the Methodology the following factors should be taken into account in examining the similarity of goods or services: • the nature of the goods and services; • the intended purpose of the goods and services; • the method of use; • the complementarity and competition of the goods and services; • the distributive channels; • the actual or potential purchasers (the relevant public) • the usual origin of the goods and services in terms of their place of manufacture; • the usual sale and service outlets.

4. COMPLEMENTARITY • When the goods differ in terms of their nature and intended purpose and when they are not mutually competitive, the fact that such goods are complementary may be sufficient for establishing their similarity. • Apart from this, in the case of such goods, their distributive channels would also be the same. • For instance, by its nature hardware is dissimilar to software and their intended purpose is specific, but the fact that both are necessary for executing a unique function, the operation of a computer, makes them similar.

5. COMPLEMENTARITY • Goods and/or services shall be considered similar when there is a close functional connection between them in the sense that one is indispensable or important for the use of the other, they shall be considered as similar, (direct/functional complementarity). • Example: hardware and software; cigarettes and smoking kits • Exceptionally , even when there is a functional complementarity between the goods and/or services, but the relevant public is not likely to establish a link between them, they shall be considered dissimilar. • Example: although an electrical cable and software contribute to the functioning of a computer they are not considered to be similar products.

6. INDIRECT COMPLEMENTARITY • Even when there is no functional complementarity between goods/services, they will be considered similar if it is reasonable that a significant part of public considers such good/services to be complementary.

7. PRACTICE Earlier trademark: Contested: BOSSINI Class 25: Clothing, footwear, and headgear • Class 18: leather and imitations of leather and goods made of these materials (not included in other classes), suitcases, travelling bags, umbrellas, parasols, walking sticks.

8. COMPLEMENTARITY BETWEEN GOODS AND SERVICES • Complementarity can be identified also in making comparison between goods and services. • Namely, it is common for certain enterprises to offer maintenance for the goods they sell. This is the case in maintenance services, which are complementary with respective goods (automotive service shops and automobiles).

9. Thank you for your attention! Dragana Perisic, counselor www.zis.gov.rs dperisic@zis.gov.rs