3

Various Issues Related to a Revision of
the Similarity-Based Groups Defined in
the “Guidelines for Examination for Similar Goods and Services”“Guidelines for Examination for Similar Goods and Services” (hereinafter referred to as the“Similarity Guidelines”) play an important role in the examination for trademark registration by Japan
Patent Office and in the application/registration practices by trademark applicants and attorneys.
However, the scopes of similar goods in the Similarity Guidelines have not been drastically revised since
first it was introduced in 1960. Also the scopes of similar services have not been revised since 1992 when
the service mark registration system was introduced. Therefore, the current Similarity Guidelines cause
complaints in the relevant sectors that they are not in conformity with the current business practices. It
is also pointed out by Industrial Structure Council and Intellectual Property Promotion Plan of the Prime
Minister’s Office that the scope of similar goods/services in the Similarity Guidelines should be revised inorder to reflect the current business practices.
Under the circumstances, we established a research committee of experts and conducted variety ofresearches and surveys in and outside Japan, to seek some directions and solutions for the expected
problems arising out of the possible revision of the Similarity Guidelines

Ⅰ Introduction
1

Background of this study

Article 4(1)(xi) of the Trademark Act
stipulates that no trademark shall be registered if
the trademark is identical with, or similar to,another person's registered trademark which has
been filed prior to the filing date of an application
for registration of said trademark, if suchtrademark is used in connection with thedesignated goods or designated services relating
to said registered trademark or goods or services
similar thereto. For the examination of thisarticle, trademark examiners use Similarity
Guidelines in order to determine which goods orservices are similar to each other.
In principle, any goods and services
categorized into the same “Similar Goods/ServicesGroup” defined in the Similarity Guidelines arepresumed to be similar to each other under thecurrent operation of trademark examination. Such
operation enables examiners to make swift andstandardized decision on the similarity ofgoods/services. Not only the examiners but also
other trademark system users such as trademark
applicants uses the Similarity Guidelines when
they conduct trademark clearance searches
before filing application or other situations in thetrademark management and protection. In thisway, the Similarity Guidelines play an importantrole in ensuring predictability.
The scopes of similar goods in the Similarity

IIP Bulletin 2009

Guidelines have not been drastically revised
since first it was introduced when the former
1959 Japanese Goods Classification system wasadopted regardless of the significant changes inbusiness practices and economic situations (alsothe scopes of similar services have not beenrevised since 1992 when the service markregistration system was introduced). Therefore,
the Similarity Guidelines need to be revised inorder to reflect the current business practices.
Such revision is expected to, however, raise
the following issues for example:(i) Various issues raised in connection with
the international classifications (including
the issue of “similarity of goods indifferent classes”);(ii) The issue of how (when) the revised
Similarity
Guidelines
shouldbeintroduced;(iii) The
issueofso-called“mutualdisqualification”, and(iv) Other issues (for example, the issue of
expression of goods and services thatrelates closely to the revision of thescope of similar goods/services).
Gathering information from in and outside
Japan and taking into consideration of thediscussion by the experts from the field ofacademia, legal and industry, we carried out thestudy for exploring the basic direction of arevision of the Similarity Guidelines and possible
solutions to various issues including the aboveraised in connection with the revision.

● 20 ●2How to conduct the study

In this study, we conducted the following
four researches:

Ⅱ Users Viewpoints upon the“Guidelines for Examination for
Similar Goods and Services”
1(1) Establishment of a committee
In order to ask for review, analysis andadvice from professional view points, weestablished a research committee comprises theexperts from academia, lawyers and patent
attorneys, and industry. The committee held ameeting five times in total.
(2) Domestic questionnaire research andinterview research
We conducted a questionnaire research on
about 3,000 users of the Similarity Guidelines
such as domestic companies, organizations, andpatent agencies in order to ask for their opinion
upon the Similarity Guidelines, merits anddemerits, desired improvements, impact of therevision, etc.
Based on the results of the questionnaire
research, we carried out a face-to-face interview
research on eleven domestic companies andpatent agencies(3) Overseas questionnaire research andinterview research
We conducted a questionnaire research on
overseas intellectual property offices and law
firms in order to ask whether they had domestic
guidelines equivalent to the Similarity Guidelinesor a manual for determining similarity of goods
and services, and how their respective Trademark
Offices examine the similarity of goods andservices and conduct searches therefor. Fromamong the responding intellectual property
offices and law firms, we chose some offices andfirms that appeared to be different in terms ofsimilarity determination criteria and searchmethods and conducted a face-to-face interview
research on them.
(4) Research on relevant documents madeavailable in and outside Japan
We collected information on other countries’
guidelines that correspond to the Similarity
Guidelines, their examination manuals fordetermination of similarity of goods and services,and other relevant data including legal casereports and decisions issued in Japan or someother countries. We presented the collected
information at a committee meeting anddistributed a report containing the information.

PurposeAs the Similarity Guidelines have widely
been used by a variety of trademark system users
including trademark applicants, the revision of
the Similarity Guidelines would have significant
impacts on such trademark system users.
Accordingly, we invited representatives of theelectronic and food industry groups to thecommittee and asked them to submit their views,
needs, and opinions concerning the current
Similarity Guidelines from the standing point ofthe users.
In addition, we conductedquestionnaire survey and interviews among theusers.
2Summary- The Similarity Guidelines are the common rules
shared by the Patent Office and applicants, etc.
The greatest merit of the Guidelines is toensure the predictability as to which
goods/services are similar/not similar achievedby standardized examination.
Therefore,
careful consideration should be given toprevent a revision from lowering predictability.
- Possible revisions of the Similarity Guidelines
do not have to be an overhaul. The revisions
should be focused on the parts of theGuidelines that have been criticized byindustries, etc., because of the discrepancy
with the current business practices andcategorization.
- It is also necessary to adapt the goods orservices exemplified in the Similarity
Guidelines to the current business practices bydeleting or modifying outdated indications ofgoods or services.
- It is important to clarify the delimitation of each
Similar Goods/services Group and the reasons
why they are determined so.

Ⅲ Study on Various Issues Related
to a Revision of the “Guidelines
for Examination for Similar
Goods and Services”
1● 21 ●Issues related
Classification

totheInternational

When the former Japanese classification
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system was replaced with the International
Classification in 1992, it was postponed to revise
the Similar Goods Group. This has allowed
similar goods to be categorized into different
classes in some cases (“similarity of goods indifferent classes”). Such cases were rarely seen
under the former Japanese Goods Classification
system.
As a result, in some cases, a trademark
application is refused based on a cited trademark
registered by a trademark holder in the different
business field. This has increased the burdens
on both applicants and the Patent Office.
There are a number of goods that are notclosely related in terms of today’s businesspractices although they are classified in the same
Similar Goods Group in different classes. Also
there are a number of goods that are outdated andnot commercially available anymore.
These
situations further complicate this issue of“similarity of goods in different classes”. Thuspossible revisions of the Similarity Guidelines
should be considered, with focusing the above
situation, to shrink the issue of “similarity ofgoods in different classes”.
The current Similar Goods Groups werecreated based on the groupings under the former
Japanese Classification system.
Since those
who have no practical experience under theformer Japanese Classification system areincreasing, it is pointed out that the users of thecurrent Similarity Guidelines find it increasingly
difficult to understand the criteria for Similar
Goods Group and its historical backgrounds.
Therefore, it is necessary to discuss about themeasures to clarify how and why each Similar
Goods Group is historically created.
2So-called “mutual disqualification” problem

Identical or similar trademarks can becoexisting by not designating the goods/services
that belong to the same Similar Goods Groups.
However, if non-similar goods under the current
Similarity Guidelines are regarded as similar
goods under the revised Similarity Guidelines,
this situation will severely afected. Even if X
and Y have registered their respective
trademarks under the current Similarity
Guidelines, neither X nor Y would be able toregister any trademarks created by slight
modification of its registered trademark (such aschanging the letters contained in the trademark
from Katakana to English letters, changing thestyle of characters, and adding a figure) under theIIP Bulletin 2009

revised guidelines, once the designatedgoods/services of the respective registeredtrademarks would be regarded as similar
goods/services.
This is so-called “mutualdisqualification” problem.
It is quite natural for companies to use theirregistered trademarks with slight modification inorder to adapt them to the commercial trend andthe management strategy.
If “mutualdisqualification” becomes a common phenomenon,
it affects corporate brand strategies.
Although it would be inappropriate to avoid
any revision of Similar Goods Groups that could
cause“mutualdisqualification”,
possiblerevisions should be made very carefully withfocusing on the groupings of goods or services
that could cause misunderstanding or confusionof their sources, and with due consideration ofcorporate brand strategies.
When “mutualdisqualification” occurs, each applicant should
consider claiming dissimilarity by submitting
evidence on the use of the trademark in business.
3Methods to introduce
Similarity Guidelines

therevised

With regard to the introduction of therevised Similarity Guidelines, there are twooptions. The first option is to introduce therevised guidelines to any application filed on orafter a certain date (application date baseintroduction). The second option is to introduce
the guidelines to any application for which an
examiner’s decision or a appeal decision is madeon or after a certain date (decision date baseintroduction).
The application date base introduction would
be advantageous for applicants in predicting theresult of similarity judgment on their applications.
On the other hand, it is disadvantageous in thatthe former guidelines would remain applicableeven after the revision of the guidelines to adapt
them to the current business practices.
On the other hand, the decision date baseintroduction would be advantageous in making
determination on similarity of goods or services
that better reflect the current business practices,which is the very purpose of the Similarity
Guidelines.
On the other hand, suchintroduction would be disadvantageous forapplicants
inpredicting
theresultofdetermination of similarity.
Furthermore, itwould strengthen the sense of unfairness among
applicants because the registrability depends onwhether the examiner’s decision or appeal● 22 ●

decision comes before or after the enforcement
date of the revised guidelines.
In consideration of these advantages anddisadvantages, it would be more appropriate tointroduce the revised guidelines to applications
filed on or after a certain date in principle inorder to ensure predictability for applicants. If
an applicant who has received a notice of reasons
for refusal claims that the goods or services inquestion are dissimilar by submitting proof for
related business practices, it would beappropriate to make a similarity judgment inconsideration of such business practices.

should be determined based not only on eachcontent of the decisions but also on whether theconcept of the goods or services in question has
been widely recognized or established.

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Future “Similarity Guidelines” from thelong-term perspective(1) Early reflection of the results ofdiscussions in the Nice Agreement,Preparatory Working Group of theCommittee of Experts to the Similarity
Guidelines
It is possible to revise Similarity Guidelines
in accordance with the results of discussions inthe Preparatory Working Group of the Committeeof Experts of the Nice Agreement without
waiting for the decisions of the Expert
Committee. However, the necessity of such
early reflection should be reviewed inconsideration of the user needs and thedevelopments in the relevant discussions among
the Ad-hoc Working Groups of the Agreement
where the frequency of the revision of theinternational classification is under discussion.
(2) Global harmonization of the Similarity
Guidelines
It is desirable to keep the Japaneseexamination style based on grouping system ofsimilar goods/ services and it was not necessary
to adopt cross-search-list system adopted byforeign countries.
It could be possible to promote the Japanesegrouping system to the Eastern Asian countries
and even all over the world to achieve globalharmonization. However, careful consideration
should be made on this idea from the view pointof the differences of business circumstances ineach country.
(3) Early reflection of decisions by appealboard and courts to the Similarity
Guidelines
The early reflection of decisions by appeal
board and courts to the Similarity Guidelines(4) Others
Description of goods and services, etc.
should be further discussed in consideration ofapplicants’ convenience and other factors.

Ⅳ Similarity Judgment and Searchof Goods or Services in Major
Foreign Countries
Overseas questionnaire survey

In this survey, we sent questionnaires toabout 20 intellectual property offices and law firms
in four European countries, OHIM, Canada, UnitedStates and and three Asian countries.
Weconfirmed that South Korea and China have used
the guidelines based on the Japanese Similar
Goods/Services Group style.
The results of the survey have also shownthat the rest of the countries that conduct ex
officio examinations on relative grounds for refusal
tend to have created and publicized manual for
determining the similarity of goods or services.
2

Overseas interview survey

After analyzing the responses to thequestionnaire, we visited the intellectual
property offices and law firms in four countries,i.e., South Korea, Germany (only law firms), theUnited Kingdom, and the United States in orderto conduct a detailed interview survey on how
they examine and determine the similarity ofgoods and/or services.
The law firms inGermany and the United Kingdom provided us
with data compiled from the viewpoint of users ofthe Community Trademark system.
Among those four countries, we wereparticularly interested in South Korea, which hadestablished, like Japan, the “Guidelines forExamination for Similar Goods and Services.”
In South Korea, the Guidelines were revised
effective on January 1, 2007. In the revision, thescopes of Similar Goods/Services Groups wererevised. The revision has caused the issue of“mutual disqualification”, which is one of themajor issues addressed in this study. However,according to the Korean Intellectual Property
Office, they did not discuss possible solution forthis issue before the revision nor take any● 23 ●IIP Bulletin 2009

measures or provide advice to applicants for thesolution even after the revision. Furthermore,South Korea introduced the revised guidelines toapplications in the phase of examination (decisiondate base introduction). Consequently, anapplicant could receive citation refusal based on aprior trademark that was unpredictable at thetime of filing the application. This situation has
happened to some applicants in reality but has
not caused any significant problem because manyof those applicants overcame the refusal by
narrowing the scope of designated goods/services.
Although the United Kingdom does not haveguidelines that correspond to the Japanese
Similarity Guidelines, it has a list of goods andservices for cross-class examination, called“Cross Search List.” In the United States, asimilar list is prepared and publicized under thename of “Coordinated Class.”

Ⅴ Conclusion
The Similarity Guidelines provide the base ofexamination on similarity of goods and/orservices in respect of Article 4 (1) (xi) of theTrademark Act. Despite the highly specialized
nature thereof, it is used not only by the Patent
Office but also by other users such as applicants.
The guidelines greatly influence trademark-related
decisions made by users such as pre-application
trademark search, response to a refusal, licensing
or assignment after registration, and theenforcement of trademark right.
In recent years, the Japan Patent Office has
been considering a revision of the Similarity
Guidelines in order to adapt them to the actual
business practices. Under the circumstance, it
was very meaningful that experts in various fields
met to study the recent developments in andoutside Japan and discussed the basic direction ofa revision of the Similarity Guidelines and thebasic approach to various issues that would beraised as a result of a revision. The results ofthese discussions were summarized in this report.
We hope that this report will contribute to thediscussions at the Patent Office.
The Similarity Guidelines need to beperiodically revised to catch up with the changing
business circumstances.
We hope that thisreport will contribute to the future revisions ofthe Similarity Guidelines to further increase theconvenience and benefits for the Patent Officeand users.
(Senior Researcher: Nobuhide HAYAKAWA)

IIP Bulletin 2009● 24 ●