"Our brand name is different from the Japanese registration by one letter. Is that enough?" "Does a Chinese-character mark conflict with a katakana mark?"
Whether two marks are similar decides both whether your application is refused in Japan and whether your use infringes someone else's right. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains how similarity is judged in Japan and what it means for overseas brands.
Key points of this article
- Japan compares marks by appearance, sound (pronunciation) and concept (meaning).
- The final question is overall: is there a risk that consumers will confuse the source?
- The goods and services must also be identical or similar.
- In Japan, pronunciation very often decides the case — including how a foreign word is read in katakana.
The three tests
1. Appearance
Do the marks look alike? For word marks, the letters, their order and overall shape are compared; for logos, the shapes and composition. Example: "ABC" and "ABG" may be similar in appearance.
2. Sound (pronunciation)
How are the marks read aloud in Japan? This is the test that most often decides similarity. English or Chinese-pinyin brand names are compared by how a Japanese consumer would naturally pronounce them in katakana. Example: "FUJIYAMA" and "FUJIYAMAH" sound almost identical.
3. Concept (meaning)
Do the marks call up the same meaning or idea? Example: "太陽" (sun, in kanji) and "SUN" share the same concept and may be similar even though they look and sound different. For Chinese-character marks this test is important, because many Chinese words share meaning with Japanese kanji.
An overall judgment
Similarity in one of the three aspects does not automatically make the marks "similar", and difference in one aspect does not make them safe. The examiner — or a court — considers the three aspects together with the trade circumstances, the goods and services and the typical customers, and asks whether consumers are likely to be confused about who provides the goods.
| Aspect | Likely similar | Likely not similar |
|---|---|---|
| Appearance | Very close letters or design | Completely different design |
| Sound | Almost the same reading in Japanese | Clearly different reading |
| Concept | Same meaning or image | Unrelated meaning |
Similar goods and services matter too
A refusal or infringement also requires that the goods or services be identical or similar. In examination, the JPO uses "similar group codes" to decide which goods are similar — goods in different Nice classes can still be similar, and goods in the same class can be dissimilar. Very famous marks, however, can be protected even against use on unrelated goods.
Points for overseas brands
- Changing one letter rarely helps if the Japanese pronunciation stays the same.
- A mark in Chinese characters can conflict with a Japanese kanji or katakana mark through meaning or reading.
- For logo marks combining text and a figure, the text part is often compared on its own.
- Search in Japan before you launch — a mark that is clear in China may not be clear in Japan.
FAQ
- Q. Can we judge similarity ourselves?
A. A first check is possible, but the overall judgment (especially Japanese pronunciation and similar group codes) needs experience. We do a free prior search when you instruct us to file. - Q. A similar mark already exists in Japan. Should we give up?
A. Not necessarily. Options include changing the mark, narrowing the goods, a non-use cancellation of the earlier mark, or — since 2024 — a consent from its owner. - Q. Are logos and word marks compared differently?
A. Yes. For figurative marks, appearance carries more weight; for marks containing words, the readable part is usually compared by sound and meaning too.
Summary
Key points
- Japan judges similarity by appearance, sound and concept, as an overall assessment of confusion.
- The goods and services must also be similar.
- Japanese pronunciation often decides the outcome for foreign brand names.
- Search in Japan before you file or launch.
Related articles
- Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney
- Trademark Search in Japan: How to Check Prior Marks Before Filing (and What People Miss)
- Japan's Trademark Consent System (Since April 2024): Requirements, Documents and Limits for Foreign Applicants
- Accused of Trademark Infringement in Japan? How to Respond to a Warning Letter or an Amazon/Rakuten Complaint
Planning to protect your brand in Japan?
Tell us your mark and your products — we will reply with the classes you need and a fixed quote, free of charge.
BrandAgent Patent Office (Kyoto, Japan)
Toru Kano, Japanese Patent Attorney