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Bottom line: The Board found confusing similarity between “N / NOVATEC” and “NOVATIC with its transliteration in katakana”.

The applicant filed an application for “N / NOVATEC” shown below, designating bicycles and their parts and fittings, etc. in Class 12.  The examiner cited “NOVATIC with its transliteration in katakana” also shown below, designating two-wheeled motor vehicles, bicycles and their parts and fittings, etc. in Class 12.

<Applied-for mark>

<Cited mark>

The designated goods of the applied-for mark are wholly included in those of the cited mark.  So, the question is whether the applied-for mark is similar to the cited mark or not.

The Board analyzed the marks and found as follows:

<As for the applied-for mark>
- The applied-for mark is composed of “N”, a red line and white “NOVATEC” in the black box.  “N” and the red line are identical in width and are unified as a whole.  “NOVATEC” in the black box is wider than “N” and the red line and appears separately from “N” and the red line.
- “N” and the red line have no particular meaning.  “NOVATEC” is not a dictionary word and has no particular meaning, and it will be pronounced as [no-ba-te-kku].
- There is no circumstance to regard the applied-for mark as a whole.  Traders and consumers will recognize “NOVATEC” separately from “N” and the red line.

<As for the cited mark>
“novatic” is not a dictionary word.  Accordingly, the cited mark has no particular meaning and is pronounced [no-ba-ti-kku].

<Comparison>
- The applied-for mark and the cited mark share the significant beginning [no-ba] and the last sound [kku].  The marks are different only in the middle sounds, [te] v. [ti].  The marks will not be distinguishable phonetically as they are similar in overall tone.
- “NOVATEC” and “NOVATIC” are both composed of seven letters and differ only in the sixth letter, “E” v. “I”.  The marks are similar visually when “NOVATEC” in the black box is focused on.
- The marks are not comparable semantically.
- Considering the above factors comprehensively, the marks are not similar to each other.

<As for the applicant’s argument>
The applicant argued that “NOVATEC” should not be extracted from the applied-for mark.  However, the Board recognized that there is no circumstances to always regard the applied-for mark as a whole and “NOVATEC” may independently function as a source identifier.

And so the Board sustained the examiner’s refusal.