How to Determine Similarity of Goods/Services (1)
In the article “
Effects of Trademark Rights” in this website, we have explained that an owner of a trademark right
not only has an exclusive right to use the registered trademark in connection
with the designated goods/services, but also is allowed to exclude the
use of the scope of similarity by another person.
In this article, we are explaining “how to determine similarity of goods/services”, i.e. the method of determining the “scope of similarity” of the designated goods or services of trademarks.
In principle, the test to determine similarity of goods/services is performed by ascertaining whether or not there is a following situation: due to the circumstances that the goods/services in question are usually manufactured, marketed or provided by one and the same business, use of identical or similar trademark for the designated goods/services of the applied trademark and the cited trademark may cause a misunderstanding that those goods have been manufactured, marketed or provided by the same business.
The circumstances of trading goods and those of trading services are very different from each other. Taking it into consideration, an assessment should be made in consideration of the following 4 categories, which are given in the content of the web site of Japan Patent Office titled “Article 4(1)(xi) of the Trademark Act (another person's registered trademark which has been filed earlier)” setting out the criteria of “similarity of goods/services”:
(1) Similarity between Goods
(2) Similarity between Services
(3) Similarity between Goods and Services
(4) Consideration of circumstances of trade in determining similarity of goods/services
In brief, similarity of goods/services is determined in a specific case by considering the similarity and circumstances of trade as shown in the above (1)-(4).