The JPO appeal examiners concluded that “e-CONNECT” and “CONNECT” are dissimilar. | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

The JPO appeal examiners concluded that “e-CONNECT” and “CONNECT” are dissimilar. | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Access

News & Reports

The JPO appeal examiners concluded that “e-CONNECT” and “CONNECT” are dissimilar.

April 27, 2022
Noriko Yashiro

Appeal number Rejection 2021-009795 (JP Appl. No. 2019-129668)
Case summary The applied-for-trademark “e-CONNECT” and the cited trademark “CONNECT” are dissimilar because there is no likelihood of confusion of the trademarks as a whole in appearance, sound, and meaning. Thus, the applied-for-trademark “e-CONNECT” is allowed to be registered.
Date of decision March 10, 2022
Demandant (Applicant) Tokio Marine & Nichido Fire Insurance Co., Ltd.
Trademark(s)

Applied-for-trademark: e-CONNECT
Cited trademark: CONNECT

Designated Goods/Services and Class(es)

Designated services of the applied-for-trademark:
Agencies for non-life insurance ; claim adjustment for non-life insurance; non-life insurance underwriting; and others in class 36

Designated services of the cited trademark:
Agencies for non-life insurance ; claim adjustment for non-life insurance; non-life insurance underwriting; and others in class 36

Judgement

(1) Applied-for-trademark:

The applied-for-trademark consists of the letter string “e-CONNECT” in standard characters. It is a combination of plain words “e-” meaning “electronic, online, Internet” and “CONNECT” meaning “to join, link (two or more things)” and others. It is cohesive as a whole in appearance because there is no spacing between “e-” and “CONNECT”. It could be naturally pronounced in a breath, as a whole. Further, it is reasonable to say that traders and consumers should perceive “e-CONNECT” as a cohesive, coined word as a whole because it is difficult to say that “e-” indicates quality in field of the designated services and that there is a difference between “e-” and “CONNECT” in degree of distinctive character and because there is no reasonable reason to disregard the portion “e-”. With the above in mind, it is reasonable to say that the applied-for-trademark should be pronounced as “e-CONNECT” and should have no specific meaning attached to it.

(2) Cited trademark:

The cited trademark consists of the letter string “CONNECT” in standard characters. It should be pronounced as “CONNECT” literally and should have meaning “to connect”.

(3) Comparing trademarks:

As for appearance, it is possible to distinguish the applied-for-trademark from the cited trademark clearly because there is a difference in portion “e-” at the beginning of the applied-for-trademark.

As for sound, it is possible to distinguish the applied-for-trademark from the cited trademark clearly because there is a difference in sound “e-” at the beginning of the applied-for-trademark.

As for meaning, there is no likelihood of confusion because the applied-for-trademark has no meaning and because the cited trademark has a meaning of “to connect”.

With the above in mind, it is reasonable to says that the applied-for-trademark and the cited trademark are dissimilar because there is no likelihood of confusion of the trademarks as a whole in appearance, sound, and meaning.

(4) Conclusion:

The applied-for-trademark should be registered because it is dissimilar to the cited trademark regardless of similarities of designated services.

Comments

The applicant cited the following registrations to show that they were considered dissimilar because of differences of “e-” or “E-” at the beginning of the trademarks:

– “E-STAGE” and “Stage”
– “e-flex” and “FLEX”
– “e-NAVI” and “NAVI”