Trademark Registration – Classification Guide Class 35 in Japan

What is the classification of Class 35?

I’m going to set up an online store for Japanese people. In this online store, I’m going to sell furniture made in various workshops, like a select shop.
The products will have the trademark of the workshop on them. But the website will show the name of the store. So, I want to register the store name as a trademark. In this case, should I apply for the store name mark designating “furniture” in Class 20?

You want to register a trademark for the name of an online store that sells the products of another company.
If so, then you should designate the service “retail services or wholesale services for furniture” in class 35

So I should designate services, not goods.
I’ve already decided to sell furniture, but once I get my business going, I’d like to expand it into miscellaneous goods such as tableware and fashion. Will there be any problems if I designate other categories than “retail services or wholesale services for furniture“?

This page explains what services are included in Class 35.
Before filing a trademark application, make sure you know whether your business is included in Class 35 or some other category!

Class 35 includes advertising; management, organization and operation of businesses; office work; retail and wholesale of goods.

Class 35 includes advertising; management, organization and operation of businesses; office processing; retail and wholesale of goods; and the like.

Services included in Class 35 and services NOT included in Class 35

List of main services in Class 35

The main services included in Class 35 are listed below.
These services can be designated by Amazing DX_®.

Advertising; management, organization and operation of businesses; office processing, etc.

Retail services or wholesale services for various goods

The above list of “the main services included in Class 35” is just an example.
Let’s take a closer look at what other services are included in Class 35 and what services are not.

What should you do if you want to designate such service? (Services included in Class 35)

Retail and wholesale of various goods

→When you want to specify them in Amazing DX_®, please specify “retail services or wholesale services for (name of goods)” which includes the goods to be sold.
It does not matter where the product is sold or the format of the sales method, such as retail stores, wholesale stores, vending machines, mail-order sales by catalog, online shopping, TV shopping, etc.

For example,

However, there is a point to be noted when specifying the “retail services or wholesale services” for various products.
For details, please read the later section “When designating two or more retail and wholesale services“.

Advertising

→If you want to specify this kind of service in Amazing DX_®, please specify “advertising and publicity services“.

For example,

• distribution of samples
• development of advertising concepts
• writing of publicity texts
• publication of publicity texts
• shop window dressing
• production of teleshopping programmes
• organization or management of trade fairs for advertising purposes
• public relations
  etc.

Consulting related to business

→When you want to designate this kind of services in Amazing DX_®, please designate “business management analysis or business consultancy“, “business management“, “marketing research or analysis“, “providing information concerning commercial sales“, etc.
If you are not sure which of these services to designate, please consult with a patent attorney via chat.

For example,

• competitive intelligence services
• professional business consultancy
• negotiation of business contracts for others
• marketing research
• sponsorship search
  etc.

Office processing related

→When you want to designate this kind of services in Amazing DX_®, please designate “office functions, namely filing, in particular documents or magnetic tapes“, “compilation of information into computer databases“, “reception services for visitors in buildings [office functions]“, etc.

For example,

Financial processing related

→When you want to designate this kind of service in Amazing DX_®, please designate “preparation, auditing or attesting of financial statements“.

For example,

• financial auditing
• tax preparation
  etc.

However, there are a point to be noted when specifying “preparation, auditing or attesting of financial statements“.
For details, please read the later section “Wen designating “preparation, auditing or attesting of financial statements““.

Other services included in Class 35

→If you would like to designate such services in Amazing DX_®, please contact our patent attorney via chat.

• marketing
• sales promotion for others
• search engine optimisation for sales promotion
• negotiation of business contracts for others
• cost price analysis
• accounting
  etc.

Services NOT included in Class 35

Financial Services

• financial analysis
• financial management
• sponsorship
  [All class 36].

Legal services and intellectual property-related services

• legal services in relation to the negotiation of contracts for others
• licensing of intellectual property
• legal administration of licenses
• copyright management
• registration of domain names [legal services]
  [All class 45]

Other services NOT included in Class 35

• real estate management; stock brokerage services [class 36]
• transportation logistics [class 39]
• energy auditing; graphic design of promotional materials [class 42]

Notes on designating Class 35.

When designating two or more retail and wholesale services

In the Japanese trademark registration system, there is a rule that if the scope of the designated goods/services is too wide, a notification of provisional refusal will be issued. (This will be explained in detail in another article.)

The basic rule is that “the number of similarity group codes contained in one class must be 22 or less. However, there are the following special rules for retail and wholesale services in class 35.

1. Retail/wholesale services of goods in the same category will have the same similarity group code; retail/wholesale services of goods in a different category will have a different similarity group code.
2. If an application designates two or more retail/wholesale services with different similarity group codes, a notification of provisional refusal will be issued on the grounds that the scope of services is too broad.

For example,

→Since there is only one similarity group code, the trademark can be registered with only one application.

→Since there are more than one similarity group code, if these are specified in one application, the trademark application will be refused.

So I can’t register a trademark for retail/wholesale services by designating all of the furniture, miscellaneous goods, and fashion related items?

Yes, you can. If you prove that you are actually using the trademark or that you intend to use the trademark(*), you can register the trademark for the retail and wholesale services with different similarity group codes in one application.

So there’s a way to register a trademark for a wide range of retail and wholesale services!

(*) If you use Amazing DX_®, additional fees will be charged for the procedures to prove “use of the trademark” and “intent to use the trademark”.

When designating “retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and livingware, carrying all goods together“

The service “retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and livingware, carrying all goods together” refers to retail and wholesale services dealing in a comprehensive manner in various genres of goods, such as department stores and supermarkets.

If you file a trademark application designating these services, your trademark registration will be refused in the following cases.

• Where the applicant is an individual
  or
• Where the applicant is a company, and the examiner has searched the applicant and is unable to determine whether or not the applicant is actually engaged in this service.

If you can prove that you are actually using the trademark, or that you intend to use the trademark, you may be able to register the trademark for this service as well.

When designating “preparation, auditing or attesting of financial statements“

According to the law, only a “certified public accountant” or an “audit corporation” is allowed to provide the service of “audit or certification of financial documents” as a business. (Article 47-2 of the Certified Public Accountants Act)

Therefore, unless the applicant is a “certified public accountant” or an “audit corporation,” it is not possible to register a trademark designating the service of “preparation, auditing or attesting of financial statements“.

If you file a trademark application designating this service, the examiner will search the applicant to see if he or she is a certified public accountant or auditing firm.
If the examiner confirms that the applicant is a certified public accountant or auditing firm, the trademark can be registered.

Basically, a person or company that is not a “certified public accountant” or an “auditing firm” does not need to register a trademark designating this service.
Even if you do audit financial documents in your company, you are not performing this service as a business (i.e., you are not being paid to do it for others). Therefore, you do not need to register your trademark as you are not using your trademark for this service.

File a trademark application designating services in Class 35!

Class 35 includes the following categories: advertising; management, organization, and operation of businesses; office work; and retail and wholesale of goods. If you are in the advertising business, in the consulting business related to business management, or if you are running an e-commerce site or a specialty store, please consider filing a trademark application in Class 35.

Amazing DX_® allows you to easily select your designated goods and services online.
First, please select as many goods and services as possible. After the search, it is easy to exclude the goods marked with × and search again.

If you are not sure which goods or services to select, please feel free to contact us via chat. Our patent attorneys specializing in trademarks will be happy to answer your questions.

Reference:

• Japan Patent Office “Examination Guidelines for Similar Goods and Services (corresponding to the Nice Classification, 11th Edition, Version 2021)”.
• Japan Patent Office “Examination Guidelines for Trademarks [Revised 15th Edition]”.
• From the JPO’s “The Trademark Examination Manual”, “41.100.03 Regarding the Operation for the Examination for Confirming the Applicant’s Use or Intention of Use of a Trademark” (revised December, 2020)
• From the JPO’s “The Trademark Examination Manual”, “41.100.04 Application for Trademark Registration that may not be “Used in Connection with Goods or Services Pertaining to the Business of an Applicant” in a High Probability” (revised April, 2017).