Where the same person applies for the same trademark in respect of the same designated goods or services, the later application shall, as a rule, be refused on the grounds that it is contrary to the spirit of Article 3 of the Trademark Act.

<Reason for Refusal>

Even if the same trademark belongs to the same person, confusion as to the source does not arise. However, provisions concerning requests for indications to prevent confusion in connection with the transfer of trademark rights (Article 24-4) and trials for cancellation of trademark registration when confusion arises (Article 52-2) do not cover “the same registered trademark used for the same goods and services.” Therefore, the possibility of confusion arising after the fact exists when a transfer occurs.

<The Need for the Same Person to Apply for the Same Trademark for the Same Designated Goods and Services>

Situations may arise where, over time, it becomes necessary to use a trademark for goods or services not intended for use at the time of the earlier trademark application. In such cases, since new goods or services cannot be added to the earlier trademark, it is necessary to file a new application that includes the same designated goods and services as the earlier trademark.

＜Identical Trademarks＞

The marks must be completely identical. However, marks differing only in scale shall be deemed identical.

＜Identical Designated Goods and Services＞

Cases where they are deemed to be ‘the same designated goods and services’

(1)    Where the designated goods and services of the applied-for trademark are completely identical to those of the earlier trademark

              Goods and services designated for the applied-for trademark          A, B, C

              Goods and services designated for the earlier trademark          A, B, C

(2)    Where the goods and services designated for the applied-for trademark are included within those designated for the earlier trademark

              Goods and services designated for the applied-for trademark          A, B,

              Goods and services designated for the earlier trademark          A, B, C

Cases where they are not deemed to be ‘the same designated goods and services’

(1)    Where the goods and services designated for the applied-for trademark are identical to part of the goods and services designated for the earlier trademark:

              Goods and services designated for the applied-for trademark          A, B

              Goods and services designated for the earlier trademark          B, C

(2)    Where the goods and services designated for the applied-for trademark encompass those designated for the earlier trademark:

              Goods and Services Designated for the applied-for trademark          A, B, C

              Goods and Services Designated for the earlier trademark          A, B

(3)    Where the Goods and Services designated for the applied-for trademark are indicated comprehensively and those designated for the earlier-applied-for trademark are indicated individually

              Goods and Services Designated for the applied-for trademark          A (clothing)

              Goods and Services Designated for the earlier trademark          a (T-shirts, suits, socks)

(4)    Where the Goods and Services designated for the applied-for trademark are designated individually and those for the prior trademark are designated comprehensively

              Goods and Services designated for the applied-for trademark          a (T-shirts, suits, socks)

              Goods and Services designated for the eariler trademark          A (clothing)