Can a trademark be registered if it is in a different classification? Examples and how to judge!

Can I register a trademark if it is in a different classification?

I’ve come up with a name for the product we’re selling! I’m thinking of applying for a trademark, but it looks like some company has already trademarked a similar name. If the trademark is the same as someone else’s but in a different goods or service category, will it be registered?

It is both possible and impossible to register a trademark. In fact, the classification is not really relevant in determining whether the goods or services of your trademark are similar to those of others in Japan!

What? If the classification is irrelevant, how can I compare it to prior trademarks to determine if it is likely to be registered?

You need to look at the similarity group code assigned to the goods or services.

similarity group code?

We will show you how to check similarity group codes and examples of what can and cannot be registered when the classification of the prior trademark and the trademark for which you are applying are different.

What is classification?

Classification is the categorization of goods and services provided as a business into 45 categories.

Goods are classified in classes 1 through 34, and services are classified in classes 35 through 45.

For a list of the specific goods and services included in each category, please see the following article.

Classification guide

What is a similarity group code?

A similarity group code is a grouping of a range of goods and services that are presumed to be similar to each other.
The Japan Patent Office has established “Examination Guideline for Similar Goods and Services,” in which similarity group codes are listed for goods and services.

The similarity group code consists of five alphanumeric characters. For example, the code 01A01 is assigned to “chemicals” which are goods in class 1.

The same similarity group code exists not only within the same classification, but also in other classifications.

Relationship between classification and similarity group code

If the similarity group codes are the same, in principle, the goods and services are considered to be similar, even if they are in different classifications.

If the goods and services are determined to be similar because the similarity group codes are the same, it is extremely difficult to overturn this finding.

Example

• Apples (Class 31, Similarity group code: 32E01)
• Frozen apples (Class 29, Similarity group code: 32E01)
• Apple trees (Class 31, Similarity group code: 33D01)

The similarity group code for apples and frozen apples matches “32E01”.
Therefore, although the classification differs between classes 31 and 29, they are determined to be similar in principle.

On the other hand, apples and apple trees have different similarity group codes, “32E01” and “33D01,” even though the classification is the same in Category 31.
Therefore, in principle, apples and apple trees are considered dissimilar.

In other words, if an identical trademark designating “apples” in Class 31 already exists, and the applicant applies for a trademark designating “frozen apples” in Class 29, the application will be rejected.
On the other hand, if the applicant files an application designating “apple trees” in Class 31 of the same classification, the registration is basically approved.

Thus, if the similarity group codes are the same, it is difficult to have them registered even if they are in different classifications.

On the other hand, if the classification is the same but the similarity group code is different, then there is a possibility of registration, right? Ok, let’s check the similarity group code!

How to check similarity group codes

Search on J-PlatPat

Look up similarity group code by goods name or service name

J-PlatPat, provided by the National Center for Industrial Property Information and Training (INPIT), is a database for searching Japanese trademarks.
To find out the similarity group code for your goods or services, use J-PlatPat’s Goods/Services Name Search.

For example, if you want to know the similarity group code for “wallets,” please follow the steps below.

• Select English as the language to be used.
• Enter the word “wallet” in the product/service name.
• Press the search button.

Then, the names of goods/services containing the word “wallet” will be displayed.

The similarity group code is written in the rightmost column, and the classification is written in the second column from the left of the search result table. You can now see that “wallets” belongs to Class 18 and the similarity group code is 21C01.。

If you want to search by Japanese words, please set the language to be used to Japanese and enter Japanese words in the name of the goods or services.

Look up the name of the product or service from the similarity group code

Next, let’s look at goods and services similar to the product “wallets”.

• Enter “21C01” in the similarity group code field without entering anything in the goods or service name.
• Press the search button.

You will get many hits for related goods and services. You can see that in addition to Class 18, there are goods/services in Classes 14, 16, 20, 21 and 35 with the same similarity group code.

If you want to apply for a trademark to be used for wallets and there is already an application for a similar trademark with the same similar group code as wallets, such as metal money clips (class 16), jewelry rolls (class 14) or bags retail (class 35), your wallet application will be rejected.

Search in the JPO’s Examination Guideline for Similar Goods and Services

Look up similar group codes by goods or service name

Use the Examination Guideline for Similar Goods and Services（Version 2022） posted on the JPO website to conduct a search.

The Examination Guidelines for Similar Goods and Services is updated every year on January 1.

The classification of goods and services and similarity group codes may have changed, so be sure to check the one that corresponds to the year in which you are filing your trademark application.

Download the similar goods/services examination guideline for that year in a batch and search for the name of the goods or service you wish to examine.
You can use the Ctrl+F or Shift+Ctrl+F keys to search.

For example, if you search for “advertising” you will find “advertising and publicity services” in category 35, similar group code 35A01.

Searching for the name of goods and services by similarity group code

A search for the similarity group code “35A01” shows that there is no 35A01 in any category other than class 35.

When a prior trademark designates services in Class 35, it is important to check if there are any services in 35A01.

On the other hand, if the prior trademark does not designate any services in Class 35, then you basically do not need to worry about the prior trademark, even if the marks are similar.

If you are in trouble

There are other rules regarding similarity group codes that have not been fully introduced here.
There are also cases in which a right cannot be granted even if the similarity group codes are different.

It is a good idea to ask your trademark attorney to conduct a registration possibility search before filing an application, but you can also use Amazing DX’s trademark search to see if there are any prior trademarks.

In the Amazing DX trademark search, if there is a prior trademark with a similar group code designating the same goods or services, it will appear in the search results, even if the prior trademark was applied for in a different classification!
You don’t have to go through the trouble of checking similarity group codes in J-Plat Pat and the examination guideline as mentioned above.

We hope you will make use of this service. Go to Trademark Search
If you have any trouble operating Amazing DX, please feel free to contact us via chat.