We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found “COLLECTION B” not similar to “COLLECTION and its transliteration in katakana”.

This may be rather a rare case reflecting the uniqueness of fashion industry.  Do you find the Board’s decision reasonable? 

The applicant filed an application for “COLLECTION B” in standard character designating clothing, jackets, coats, etc. in Class 25.  The examiner refused the application deeming the applied-for mark confusingly similar to “COLLECTION and its transliteration in katakana” covering identical goods in Class 25.

<Cited mark>

The Board observed the applied-for mark and found as follows:

-　The applied-for mark is presented in same font (standard character) and size, and appears unified.  Also, it can be pronounced as [ko-re-ku-sho-n-bi:] in one breath.
-　The word “collection” is very weak in terms of distinctiveness as it is commonly used to refer to “an event for new clothing for a season” or “new clothing produced for a season” in clothing industry.  Therefore, consumers of clothing will recognize that the applied-for mark “COLLECTION B” is unified as a whole, and there is no particular circumstance that “collection” is extracted.  Thus, the applied-for mark will only have sound as [ko-re-ku-sho-n-bi:] corresponding to the whole mark.
-　Neither the sound of [ko-re-ku-sho-n] nor the meaning of collection derives from the applied-for mark.  Overall, the applied-for mark is not confusingly similar to the cited mark.

And so the Board reversed the refusal and granted the registration of the applied-for mark.