Maša Osredkar and Gregor Maček, lawyers at ITEM, published in World Trademark Review (WTR) an article concerning the EU General Court decision in case Industrie Aeronautiche Reggiane Srl v EU Intellectual Property Office (Case T-541/15, June 20 2017). In the present case, the EU General Court followed its established case law and took into account the principle that goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other and is not merely auxiliary or ancillary. Consequently, the court held that “parts of vehicles” and “vehicles” in Class 12 if Nice Classification are similar.
In Industrie Aeronautiche Reggiane Srl v EU Intellectual Property Office the EU General Court explained that “parts of vehicles” are essential for the use of motor vehicles and they are therefore complementary. According to the case law regarding similarity between the complementary goods (or services), the court held that, in spite of the differences between a finished product and the components of that product (ie, their nature, purpose and method of use), they may be regarded as being similar precisely because of their close connection, which makes the former indispensable or important for the use of the latter.
The fact that the goods were complementary was of importance in this case, even though the nature, the purpose and the method of use were different and the goods were not in competition. The complementarity of the goods in question weighed in favour of their similarity, which was even more likely since the goods were intended for the same public and used the same distribution channels.
Maša Osredkar and Gregor Maček – “Parts of vehicles” and “vehicles” in Class 12 are similar, WTR, 2017