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Even so, the goods we buy do provide us with services. I love Sally's example which illustrates how different parts of the relevant public perceive the same good:
Whilst putting this note together, I keep thinking of coats (as in coats you wear – rather than coats of paint). As a young person, you buy a coat because it looks good / the price is right / it suits you. As an old person, you buy a coat because it looks good / the price is right / it's likely to last for a long time. In youth, the item is definitely " goods ". In maturity, the item is more "service " than "goods". So perhaps "complementarity " (and I claim credit if I've invented that word) is (in some form) always with us ? And (in the trade mark context) maybe we need Decisions to prompt thinking on whether "Merging" is still moving down the line – or has moved so far down the line that we've arrived at "Merged" ?
In a recent opposition decision - that would have been fast-track had we had them already (Ms Al Skilton – the Hearing Officer - is designated to hear all early Fast-Track Oppositions) - Sally was successful in persuading the hearing officer that software programming and design services were similar to computer software. If you turn to paragraph 39 of that decision you find the very reasonable assessment:
"Dealing first with the applicant's computer software, software is the end result of software design and/or programming service. Such a relationship, which is complementary, is likely to be one where the average consumer regards the same undertaking as being the provider of both the goods and services."
Looking back in the decision, I see that the Hearing Officer very properly reminded herself about the European case law on the subject of complementary goods and even quotes from El Corte Inglés v OHIM Case T-420/03,
“96(sic -its paragraph 98)...goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (Case T-169/03 Sergio Rossi v OHIM-Sissi Rossi [2005] ECR II-685).”
However we see that this idea of complementary goods has diverged in European jurisprudence from the broad relationship that Sally envisions. The concept seems to be carefully limited so in another El Corte Inglés case T-39/10 (under appeal) we find "By definition, goods intended for different publics cannot be complementary."
Nevertheless we can confirm that the jolly similarity tool from OHIM does say that 'computer programs' in class 9 are similar to 'design and development of computer hardware and software' as having the same purpose and public and being complementary (factor 4 from the famous early Canon decision - not that you got much guidance about what it meant in 1998 its just a word in paragraph 23 ) On the other hand wine glasses are not similar to wine, however much they may complement each other. So complementarity is never enough alone.
Sally recalls that it was some twenty years ago (so 1993) that a conference in Manchester (directed at "entertainment") brought Cd's (new technology – before DVDs) to the attention of those attending. Cd's were head-lined as the music-carriers of the future. But the company that stole the headlines at the conference was not a music company – it was OCEAN (wikipedia : "one of the biggest video game developers / publishers of the 1980s and 1990s"). The music people had not thought things through – CD-content was not limited to music. This "technologies are merging " awareness played out through many years afterwards, and (inevitably) the law followed (or did it - says the Duck). Some fifteen years later, in the trade mark context, the Decision I was looking for on "technologies" went on record, being the Decision of the First Board of Appeal at OHIM in 2009 [ Case R 1215/2008-1 ]. The marks were identical CLIMAX. The Applicant's goods in Class 38 (simply "broadcasting services") and in Class 41 ( "(amongst other things) television programming services; production of television programmes ") came up against opposition from a barrage of " (electronic) games " goods in Class 9 and related "(electronic) games" services in Classes 41 and 42. The gem from this decision is : " a product covering essentially the same subject-matter will be complementary to the rendering of the service, particularly where it is offered by the same undertakings to the same consumers " [ paragraph 20 ]. The Opponent's " games [ goods and services ] " prevailed (in context) against the Applicant's " broadcasting / television " services. Product and service were complementary.
The jolly similarity tool is still (just) on side accepting that games software has a low degree of similarity with entertainment.
How far do you think this complementarity should go?
