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No trademark can be registered if it is determined to be identical with, or similar to, another person’s registered trademark that has been already filed before the date on which the application to register the subject trade has been made, and provided that the subject trademark is used in connection with the same designated goods or designated services related to the said registered trademark (Trademark Act, Article 4, 1(xi).

When examining whether a trademark, for which a trademark registration has been filed, is subject to the above stated reason for refusal, examiners at the 88av 888 judge similarity and dissimilarity between the designated goods or designated services of the filed trademark and the designated goods or designated services of another person’s already registered trademark based on applying the “Examination Guidelines for Similar Goods and Services.”

The “Examination Guidelines for Similar Goods and Services” group goods that have commonality in terms of the production sector, the sales sector, raw materials, qualities, etc.; or services that have commonality in terms of how they are being offered, the purposes for which they are being offered, the places they are being offered, etc., and are used to determine which goods group or services group belongs in the same groups, and are therefore, in principle, considered to be similar goods or services.

The goods or services in each group are given a “Similar Group Code”, which is a five-digit, common, alphanumeric code.

When conducting actual examinations, examiners consider any goods and services assigned to the same group code to be in principle similar to each other.

Similar group codes can be verified by using the classification table called the “Examination Guidelines for Similar Goods and Services” for trademark (services).

^* For Examination Guidelines for Similar Goods and Services , refer to the 88av 888 webpage here.

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【Example of similar group codes for goods】

• Class 16  Books (26A01)
• Class 24  Towels (17B01)

【Example of similar group code for services】

• Class 41  Educational services for art, sports, or knowledge (41A01)
• Class 44  Medical practices (42V02)

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Many of the same similar group codes exist not only in the same classification but also in the different classifications.

【Similarity and dissimilarity between same classifications】

• Class 16  Books (26A01)   Similarity   Newspapers (26A01)
• Class 16  Books (26A01)   Dissimilarity  Pencils (25B01)

【Similarity and dissimilarity between the different classifications】

• Class 14  Jewelry case (20A01)  Similarity  Class 20  Furniture (20A01)
• Class 14  Jewelry case (20A01)  Dissimilarity   Class 16  Penciles (25B01)

(A)Similar group codes for goods:

Similar group codes for goods are specified as follows according to the main class and intermediate class described in the Examination Guidelines for Similar Goods

• 1)Granted according to the Examination Guidelines for Similar Goods based on the 1959 Law.
• 2)The main class is indicated using alphabetical, uppercase letters.
• 3)The intermediate class is indicated by using Arabic numbers.

【Example of class 5】

Classes of Goods	Goods
05	Main class		Intermediate class
	Fuel	A	Solid fuel	01
			Liquid fuel / Gas fuel	02
	Industrial oil	B	Industrial oil	01
	Industrial fat and oil	C	Animal oil & fat Vegetable oil Modified fat	01
	Wax	D	Wax	01
	Higher fatty acid	E	Higher fatty acid	01

The similar group code for goods “Liquid fuel” is “05A02.”

(B)Similar group code for services

The similar group codes for services are granted based on the Examination Guidelines for Similar Goods and Services which were amended in 1991.

(Class 35 to 42 at that time)

【Example of class 35】

Classes of Goods	Services
35	Advertising and publicity services	35A01
	Business management analysis or business consultancy Marketing research or analysis Providing information concerning commercial sales Business management of hotels	35B01
	Preparation, auditing or certification of financial statements	35C01
	Employment agencies	35D01
	Auctioneering	35E01
	Import-export agencies	35F01
	Shorthand services Transcription	35G01
	Document reproduction	35G02
	Office functions, namely filing, in particular documents or magnetic tape	35G03
	Reception services for visitors in buildings	35H01
	Publicity material rental	35J01
	Rental of typewriters, copying machines and word processors	35J02

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Similar group codes are assigned to every designated good and every designated service and are used to check for the following: “prior applications/existing registrations,” “scope of rights,” “corrections of designated goods or designated services to eliminate any reasons for refusal,” and “determination of rights infringements of another person’s registered trademark”..

Applicants use the similar group codes to search for other persons’ already registered trademarks in the Japan Platform for Patent Information (J-PlatPat) before they file their applications to register their trademarks. For example, in order to search terms, applicants conduct searches by entering the similar group codes of goods (services) using the trademark to be registered together with the terms’ readings (katakana entry) for character and symbol trademarks.

Furthermore, the “List of Goods and Services Name” in the Japan Platform for Patent Information (J-PlatPat) allows applicants to search the “Examination Guidelines for Similar Goods and Services,” “International Classification of Goods and Services(Nice Classification)” , “TM5 ID List“, ”WIPO Madrid Goods and Services Manager” and “Goods and Services accepted at examination(Japanese or English only)”, as well as search information on the similar group codes.

For the Japan Platform for Patent Information (J-PlatPat), refer to the following URL（https://www.j-platpat.inpit.go.jp/）.

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Unless there is something to the contrary stated in the remarks column, (i) goods and services to which multiple, same, similar group codes are assigned, or (ii) goods and services to which one similar group code for them is assigned, are considered to be similar to each other.

Accordingly, Class 9 “Electronic publication” (26A01, 26D01) is considered to be similar to the goods in Class 9 “Downloadable image file recorded video/ disk/ videotape” (24E02, 26D01), “Projection film/ slide film/ mount for slide film” (26D01), class 16 “Prints” (26A01) and “Photograph/ photograph stands” (26D01).

[Last updated 10 June 2019]

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88av 888 Trademark Division FAX: +81-3-3580-5907 E-mail:[email protected]