On 19 April 2016, the General Court of the European Union (“GCEU”) came to interesting conclusions in Case T-326/14 – Joker vs Hot Joker with regard to the similarities of goods. In this case, the GCEU considered “hardware and software” in class 9 to be confusingly similar to “games” in class 28, because
(i) the general term “games” also comprises electronic and online games plus games of chance (mn 48-49); and
(ii) the “hardware and software” in question under class 9 in particular (but not exclusively [= “namely”) related to games of chance (mn 54-59).
Furthermore, and apart from the specific context above, this decision generally implies a sufficient similarity between “hardware and software” and “games” because the GCEU deemed “hard- and software” to be essential for the basic functionality of electronic and online games. Hence, these two groups of products shall be complementary (mn 54). This broad understanding of “hardware and software” in class 9 equally is often reflected in the EUIPO’s case law.
With “telecommunication” in class 38, the situation is similar: E.g., in the EUIPO’s Second Board of Appeal’s decision of 3 March 2016 in joined Cases R0653/2015-2 & R0674/2015-2 – meta4 vs Metaporn, the Board of Appeal inter alia explicitly found that services are increasingly performed electronically so that “telecommunication” in class 38 and “entertainment” in class 41 may well be similar, particularly when the “entertainment” is provided via the Internet. In the Second Board of Appeal’s view, this particularly applies because traditional telecom-providers nowadays do not only offer internet access per se, but also their own TV- and Internet-packages via the very same connection. Thus, the end-user may conclude that internet access and Internet entertainment content are offered by the same business, which suffices for establishing similarity (mn 83-90).
Against this background, the trademark law related future of “Internet of Things” products likely will prove to be exciting: E.g., what about a fridge which is connected to the Internet and which notifies you via an accompanying smartphone-app when your supplies run low and/or automatically places orders online for your supplies running low (see, e.g., Samsung’s “Family Hub” fridge): Is it a mere “apparatus for refrigerating” in class 11, a “hardware and software” in class 9, a “telecommunication service” in class 38 or all of the above?
In light of the rapid technological developments, the lines most likely will further blur.