Wordmark searches in Japan are usually conducted using a commercial trademark database called Japanese Search, which contains not only identical marks, but also marks having identical or confusingly similar sounds based on the Japanese readings of the searched mark.
In Japan, the trademark search fee is based on the number of groups of similar goods/services under which the goods to be searched fall, and not on the number of International Classes to be searched.
A similarity code is a searching code assigned by the Japanese Patent Office for each group of similar goods/services as determined by the JPO’s examination standards. The similarity code concept was introduced to facilitate judgment of similarity of goods/services due to the concurrent existence of trademarks filed or registered under the International Classification system and those filed or registered under the old Japanese Classification system. A similarity code consists of a two-digit number, one alphabetic character and a second two digit number (e.g., 17A01, 22A01). The first two-digit number refers to the class using the Japanese Classification, and the remaining part is a JPO internal reference code. The same similarity code can be found in different international classes, and such goods will be considered similar notwithstanding that they are in different classes. Lists of similarity codes are available in a book titled “Guidelines For Examination on Similarity of Goods and Services.”
For example, International Class 25 consists of 12 groups of similar goods and a similarity code is assigned to each group. If you wish to have a Japanese searcher conduct a trademark search, you should carefully consider under which group your goods fall and inform the Japanese searcher of the most relevant groups or similarity codes, if possible. Alternatively, you can provide the Japanese searcher with a list of the specific goods and let the searcher decide the most appropriate similarity codes.
In trademark searches, analysis of similarity of marks is another important factor. This should be handled by an expert because various elements must be considered, such as the way ordinary Japanese people pronounce the marks and the extent of knowledge of ordinary Japanese people in connection with certain English words. There are many cases in which native English speakers would not understand why the marks are considered similar in Japan. For example, the following marks were determined similar by the JPO:
|HOUGH = HAWK
ABSON = AVISUN
KALBAR = Calobar
OLSSON = ORSO
Car boy = Cowboy
Although review and comment on the search results entails additional cost, you can save money if you understand the concept of similarity codes and restrict the search area within the group that the most important goods fall under. A similarity code is also an identifier in the searchable trademark databases provided in the JPO’s WebPages, which can be used for preliminary searches.
Trademark Searches Using the JPO’s WebPages
Currently, on the JPO’s WebPages, namely the Japan Platform for Patent Information, or J-PlatPat, the following English searches are available: “Searching Japanese Trademark Database”, “Searching Japanese Figure Trademarks”, and “Searching Japanese Well-Known Trademarks” (see attachment #3). However, it is risky to depend totally upon the search results revealed by these English databases because no Japanese language entry is allowed and because the data itself and the retrieving system are not yet perfected. As to the “Searching Japanese Trademark Database,” it is worth using this system when you wish to locate English identical marks or when you wish to retrieve a specific case using a certain number or date. In the English version, it is not yet possible to obtain information relating to the name and address of the applicant or proprietor of the application/registration and the list of goods or services due probably to the difficulty and time required for translation. Since such information is available in the Japanese version of J-PlatPat, you may instruct your Japanese agent to translate relevant information for you.
Further, in the Japanese version, it is possible to conduct trademark searches based on sound. If the purpose of the search is to screen phonetically identical marks or if you require rough search results, you should consider having your Japanese searcher conduct trademark searches using the JPO’s database instead of the commercial Japanese Search database, in order to save cost.