What is a similar group code for trademark registration? How differs from class?

What is similar group code?

I’ve heard the term ‘similar group code’ in addition to classes in relation to designated goods/services of a trademark. What does it have to do with the designated goods/services and classes?

A similar group code is assigned by the Japan Patent Office to determine whether trademark applications and trademark registrations are similar to each other in the examination process. The code is determined by the designated goods or services, and if the designated goods or services are similar, they are assigned the same code. A same code may be assigned to goods and services that belong to separate classes.

I see. Is it possible to find out the ‘similar group code’ for the designated goods and services for which I am filing a trademark application? If there’s anything I need to be careful about, I’d like to know, too.

This article will give an overview of and notes for “similar group codes”

How similar group codes are determined

A “similar group code” is a five-digit code that is a combination of a number and a letter of the alphabet for each group of goods that are common in terms of production, sales department, raw materials, etc., and for each group of services that are common in terms of method of supply, purpose, place of supply, etc., with respect to the designated goods and services of a trademark.

Examples of similar group codes

Similar group codes for goods are established in accordance with the Examination Guidelines for Similar Goods under the 1959 Act. The similar group codes for the goods “fuel” are shown in the table below.

• The similar group code for the goods “liquid fuel” is 05A02.

Similar group codes for services are established in accordance with the Examination Guidelines for Similar Goods and Services under the 1991 Act. The similar group codes for the services in Class 35 are shown in the table below.

• The similar group code for the services ” providing employment information” is 42G02.

The first two numerals representing classes are determined based in 1959 and 1991, respectively, so there are cases where it does not match the current classes of goods and services.

Who determines similar group codes?

The JPO determines the similar group codes.

The correspondence between goods/services and similar group codes is published by the JPO in its「Examination Guidelines for Similar Goods and Services」.

You can also search and check similar group codes using the Patent Information Platform (J-Platpat). For more information, please refer to the following article.

• The “Examination Guidelines for Similar Goods and Services” are revised at the beginning of each year, and the similar group codes are reviewed correspondingly. Please refer to the latest “Examination Guidelines for Similar Goods and Services” when checking the “Similar group Code” for filing a trademark application.

What is role of similar group codes?

The JPO examiner will examine the trademark application based on the designated goods or services in the application within the scope of the similar group code assigned. The examination is conducted to determine whether there are any identical or similar trademarks registered by others and whether the trademark meets the other requirements for registration.

In principle, designated goods and services with the same similar group code are presumed to be similar to each other. Since this is not definite but presumption, there are cases where the designated goods or services are considered dissimilar even if they have the same similar group code, as a result of considering the actual state of transactions related to the designated goods or services. However, since this is a very rare case, we recommend that you consult a specialist (patent firm or patent attorney) if you need to make such a determination.

Points to keep in mind when filing trademark application

When filing a trademark application, you may need to pay attention to the number of similar group codes in the class you designate.

Specifically, when you designate a wide range of products within a single class that you designate, the JPO will issue a “Notice of Reason for Refusal” asking you if you are really using the trademark, or you plan to use it.

Receipt of such a notice does not mean that the trademark cannot be registered. It is possible to register a trademark by submitting documentary evidence of actual use or, if not in use, documentary evidence of intent to use the trademark. However, the preparation and submission of such documents requires a considerable amount of effort (and fees if you request a patent office or a patent attorney).

The criterion for determining whether or not a trademark is used for a wide range of goods or services is that the number of similar group codes is 23 or more within a single class. 22 or less will not be subject to confirmation of trademark use during the JPO examination.

However, it should be noted that, in the case of retail services in Class 35, if more than one (2 or more) similar group of retail services is designated, the use of the trademark will be subject to confirmation.

In addition, depending on the content, some cases may or may not be applicable. For details, please refer to the Trademark Examination Handbook published by the JPO website below（Regarding the Operation for the Examination for Confirming the Applicant’s Use or Intention of Use of a Trademark ※PDF）.

Relationship between similar group codes and classes

“Class” refers to the classification to which each goods or service belongs, and is divided into 45 classes from Class 1 to Class 45 according to its contents.

Please refer to the following article for the relationship between classes and similar group codes.

I now have a better understanding of the relationship between similar group codes and goods/services. I have to be careful that same similar group code may be assigned to goods/services in separate classes.

Summary

I hope you have learned that similar group codes are closely related to the designated goods and services required for trademark registration.

Our “Amazing DX” trademark search automatically consults similar group codes when you select a designated goods to see if there is anything similar to the registered trademark. The number of similar group codes is also counted. If the number exceeds 23, you will be notified so that you can avoid inadvertently selecting too many similar group codes.