What is trademark similarity? Criteria for determination explained!

Trademark Similar ?!

A trademark similar to the mark I’m using has been registered! I don’t know what to do!!!

That makes you nervous. But even if the trademarks are similar, there is a case where it doesn’t affect you. First, let’s check the registered trademark that is similar to yours.

Eh? I have thought that if the trademarks are similar, it’s not allowed? I’d like to know more about that.

This article will give an overview of criteria for determining trademark similarity, etc.

What is trademark similarity?

Whether a trademark is similar to another’s registered trademark is decided based on the following criteria: (1) whether the designated goods or designated services are similar and (2) whether the trademarks are similar.

If both conditions (1) and (2) are met, the registered trademark is considered to be infringed. The following is a schematic representation of the two criteria.

In other words, even if the trademarks are similar, if the designated goods or designated services are not similar, the trademark is not considered to infringe the trademark right of another registered trademark.

However even if the trademark right is not infringed, if the trademark constitutes unfair competition, the use of the trademark may be subject to injunction or compensation for damages.

In order to safely use the trademark, you must file and register the mark you are using.

We will now explain each of the criteria in detail.

Designated goods or services similar?

Whether the designated goods and designated services (designated goods, etc.) are similar or not differs between the judgment in a court case disputing infringement of the trademark right and the decision in the examination by the Patent Office.

Here, we would like to introduce the concept of the court case in which whether a trademark right is infringed or not is disputed.

Basic Concept of Similarity of Designated Goods, etc.

The similarity of the designated goods and designated services is judged based on whether or not confusion of origin would occur if the trademark were applied to the designated goods, etc., taking into consideration “actual circumstance of transaction”.

The “actual circumstance of transaction” refers to trade method, consumers, and other general trade circumstances of the goods related to the trademark.

Judgment of similarity of designated goods, etc. in examination by the JPO

In the examination stage at the JPO to determine whether or not to register a trademark, the similarity of the designated goods, etc. is usually determined based on the similar group code (a combination of five-digit numbers and alphabets) established in the “Goods and Services Examination Guidelines”.

For examole, the goods in the same class that are classified in the same similar group code are considered similar as shown below.

• Class 16 [25B01] “Pencils,” “Ball-point pens,” “Notebooks,” “Underlays,” etc.
• Class 20 [17C01] “Cushions,” “Zabuton,” “Pillow,” “Mattress”
• Class 30 [32F06] “Gyoza”, “Shumai”, “Takoyaki”, etc.

There are designated goods, etc. which are presumed to be similar even if they are classified in another category.

• [19B33] Class 18 “Clothing for pets”, Class 20 “Dog kennels”, etc., and Class 28 “Pet toys”, etc.
• [32F10] Class 29 “curry, stew or soup base” and Class 30 “pasta sauce”

The above is the concept regarding similarity of designated goods, etc. Next, we will explain the concept of similarity of trademarks.

Trademarks similar?

Whether or not the trademarks are similar is determined by comparing “appearance (appearance),” “designation (pronunciation),” and “concept (connotation),” and whether or not there is a risk of confusion as a sign for identification, taking “actual circumstance of trade” into consideration.

The “actual circumstance of transaction” refers to trade method, consumers, and other general trade circumstances of the goods related to the trademark.

Whether or not there is a risk of confusion as a distinguishing mark is based on the degree of attention that consumers of goods and services usually pay when they have trade.

The three factors of “appearance,” “appellation,” and “concept” are comprehensively considered. If any one of the three elements is confusing, it is considered to be a case of misidentification and confusion. On the other hand, the Supreme Court has ruled that even if only one of the three elements is similar, if the other two are different, there will be no confusion depending on the “actual circumstances of the transaction”. Therefore, although there are some types of cases, each of them is determined individually and specifically.

Appearance

A trademark is judged from the viewpoint of whether the appearance of the letters and figures representing the trademark is confusing or not.

When examining the appearance, the trademarks are not compared side by side at the same time, but are examined as if they were separated by time and place. The reason is that in general, people actually do not purchase a product by comparing the trademarks, but rather based on their memories of having purchased the product at a different location before.

Appellation（calling）

A traddemark is judged based on whether the way the trademark is read (the sound it makes when read) is confusing or not.

A trademark does not necessarily give rise to only one appellation. If the configuration of the trademark generates multiple appellations, the possible appellations will be judged as to whether they are similar or not.

Concept (connotation)

A trademark is judged from the perspective of whether the concept (connotation) of the trademark is confusing.

The concept may arise from a structure of the trademark entirely or partially. In addition, a consumer who comes into contact with the trademark must immediately perceives a certain meaning. If the meaning of a word or phrase can only be discerned after examining it, the concept cannot be recognized as arising from the trademark.

A coined word or figure or their combination is determined not to arise any concept. In such cases, similarity of the concepts is not examined.

Actual circumstance of transaction

The “actual circumstance of transaction” includes transaction method, consumer base, and other general trade conditions of the products related to the trademark, as well as the well-knownness of the trademark, the state and manner of use of the trademark, and the existence of other trademarks.

Even if the degree of similarity is not high in terms of appearance, calling and concept, there may be a risk of confusion in consideration of the actual circumstances of the transaction.

I understand that not only the trademark itself but also the goods or services designated for the trademark must be similar.

For more information on the definition of trademark infringement under the Trademark Law, please refer to the following article on this page.

Summary

We hope that you have learned the key criteria for determining whether trademarks are similar. You may have found it technical and difficult to determine whether trademarks are similar.

If you make a mistake in determining whether or not your trademarks are similar, you could be disadvantaged.

f you need help determining whether your trademark is similar or infringing, please contact our patent attorneys！