This case illustrates how the Japan Patent Office (JPO) evaluates similarity when a trademark includes a prefix such as “e-” combined with a common word.
It demonstrates that even when a mark contains a well-known term, the addition of a prefix may create a distinct overall impression if the mark is perceived as a single unit.

1. Application Details

• Mark: e-CONNECT
• Application No.: Japanese Trademark Application No. 2019-129668
• Designated Services: Financial and related services in Class 36.

2. Refusal by the JPO Examiner

The application was refused under Article 4(1)(xi) of the Japanese Trademark Act (likelihood of confusion with a prior registered trademark).

The examiner cited the following earlier trademark:

• Cited Mark: CONNECT
• Registration No.: 6186035
• Designated Services: Various services in Class 36.

The examiner concluded that:

• the dominant element of the applied mark is “CONNECT,” and
• the prefix “e-” is insufficient to distinguish the marks.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 2021-9795

The appeal argued that the mark should be evaluated as a whole, including the prefix “e-”.

4. Decision of the Appeal Board

The JPO Appeal Board reversed the refusal.

The Board found that:

• The mark “e-CONNECT” is perceived as a single, unified expression, not as a separable combination.
• The prefix “e-” is not merely descriptive in the relevant service field and cannot be ignored.

The Board further noted that:

• The applied mark produces the pronunciation “e-connect,” which differs from “connect.”
• Conceptually, the applied mark has no specific meaning, while the cited mark conveys the meaning “to connect.”

Based on these differences, the Board concluded that:

• the marks are distinguishable in appearance, sound, and meaning.

5. Outcome

The Board determined that the marks are not similar, and the refusal was set aside.
The trademark “e-CONNECT” was allowed to proceed toward registration.

Key Point for Foreign Applicants

This case highlights an important principle in Japanese trademark practice.

1. Prefixes can contribute to distinctiveness

Even short prefixes such as “e-” may affect the overall impression.

2. Whole-mark evaluation is decisive

The JPO evaluates trademarks as a unitary expression, not by isolating one element.

3. Additional sounds can avoid similarity

The presence of an extra syllable (e.g., “e-”) may create a clearly distinguishable pronunciation.

✅ Practical takeaway

In Japan, a trademark may be considered dissimilar even if it contains a common word, where:

• a prefix or additional element forms a unitary expression, and
• the overall appearance, pronunciation, and meaning differ.