Why are there registered trademarks with the same name?

I’m looking at the list of registered trademarks on J-platpat… and there is a trademark registered with the exact same name!
Is it possible to have a trademark with the same name registered?
Trademarks with the same name can be registered. The same trademark can be registered even if the designated class or similar group code is different.

When searching for registered trademarks, you may find that several trademarks with the same name have been registered. Why are trademarks with the same name registered, let alone those with similar names? This article explains why trademarks with the same name are registered.

目次 Index
  1. Reasons why trademarks with the same name are registered
  2. Specific examples
  3. When filing an application, please give due consideration to the goods and services to be designated!
  4. To reduce costs, work with our patent attorneys to select the goods or services to be designated!

Reasons why trademarks with the same name are registered

Trademark rights are registered as a set of a trademark and the goods or services in which the trademark is used. The registered trademark is only entitled to the goods or services designated in the application.

In other words, even if a trademark is registered, no rights arise with respect to goods or services not designated in the application. Therefore, even if Trademark A is registered, there is a possibility that a trademark with the same name as Trademark A will be registered if an application is filed after designating goods or services other than those designated in Trademark A.

Specific examples

Here are some examples of registered trademarks with the same name.

(Registration No.5722718)
LINE (standard character)

(Registration No.5794495)
LINE (standard character)

The above two registered trademarks are character trademarks with exactly the same structure.
Let us compare the classes and similar group codes for the trademark (Registration No.5722718)and the other trademark (Registration No.5794495), respectively. The results are as follows.

Registration No.Classsimilar group codes
572271843, 4442A01, 42A02, 42B01, 42V04, 42W01, 42X10, 42X29, 42D01, 42V01, 42W02, 42X23
57944952017C01, 19B21, 19B23, 19B33,19B42, 20A01, 24A01

Comparing the similar group codes of the above two registered trademarks, the classes are different and there are no identical similar group codes.

As explained in another article, similar group codes group goods and services that are presumed to be similar to each other. The JPO has established “Examination Criteria for Similar Goods and Services,” which lists similarity group codes for goods and services.

A trademark with the same name as the earlier application and the same similar group code as the earlier trademark is basically not registrable. If the similarity group codes are the same, in principle, the goods and services are considered to be similar.

(For more information on classes and similar group codes, please see the separate article.)

I understand that if a trademark with the same name as registered trademark A is applied for after designating a similar group code different from that of registered trademark A, a trademark with the same name as registered trademark A may be registered.
Yes, it is quite possible that a trademark with the same name as the earlier application will be registered.

When filing an application, please give due consideration to the goods and services to be designated!

When filing a trademark application, we recommend that you designate as many goods and services as possible for which you plan to use the trademark. If you wish to add additional goods or services after filing your application, you may file a new application. However, it is not possible to designate additional goods or services in the earlier application. Therefore, you need to file a new application, which will require a new application fee and time-consuming paperwork. In addition, the filing date of the new application will be delayed compared to that of the first application.

In addition, by designating as many goods and services as possible for which you intend to use your trademark, you can prevent others from applying for your trademark after you have designated other goods and services.

I don’t want my trademark to be applied for by other companies! But even if I designate a broad range of products, some of them may end up not being used… and I don’t know what products to designate and to what extent!
If you have goods or services for which you are unsure whether they should be designated, we recommend that you consult with a specialist before filing an application. They will be able to advise you on the goods or services that need to be designated after hearing about your company’s business development.
Indeed. I guess we should talk to an expert about our business development and the purpose of our application as well. That would give me more peace of mind than reading a practice manual and making a decision on my own!

To reduce costs, work with our patent attorneys to select the goods or services to be designated!

If you are unsure about the scope of goods or services to be designated before filing an application, please feel free to contact us! We can suggest goods and services that should be designated based on your company’s business development and the circumstances that led to the application. Please feel free to contact us.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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