[Trademark News] “le sapin” and “SAPIN”; does “le” make a difference?

― A case study of a French language trademark, and how definite articles are considered in Japanese trademarks―
（Appeal No. 2024-2553）

◆ Background

The Japan Patent Office initially rejected an application for the trademark “le sapin” on the grounds that it was similar to a cited mark “サパン / SAPIN” (a two-tiered combination mark in Katakana and Roman letters). However, upon appeal, the JPO determined the marks to be dissimilar. The word “sapin” is a common French noun meaning “fir tree,” and “le” is the definite article in French.

◆ Key Points of the Appeal Decision

The JPO analyzed the trademarks and found them to be dissimilar for the following reasons:

The applied-for mark “le sapin” has a uniform appearance with evenly sized and styled characters, giving it a cohesive impression and leading it to be perceived as a single phrase.

In terms of pronunciation, it is naturally read as one continuous unit, either as “le sapin” in French or “le-sa-pi-n.”

While “le” is the French definite article and “sapin” means “fir tree,” neither of these are commonly known to Japanese consumers or traders. Therefore, the combined mark does not readily evoke a specific meaning (concept). The mark “le sapin” is to be recognized as a single, cohesive term, with “le” and “sapin” forming an inseparable unit.

The cited mark consists of the Roman characters “Sapin” with the Katakana “サパン” (French transliteration in Japanese) written above it. The Katakana clearly indicates how the Roman letters should be pronounced, and it does not evoke any specific concept.

When comparing the two:

Appearance: The structure and arrangement of characters are clearly different, making the marks visually distinguishable.

Pronunciation: Differences between “le sapin” and “sapin” result in notable distinctions, especially in the initial and middle sounds, making confusion unlikely.

Concept: Neither mark evokes a particular meaning, so this aspect is not subject to comparison.

Based on these differences in appearance and pronunciation, the JPO concluded that there is no risk of confusion among consumers and traders and therefore the marks are not similar.

◆ Commentary

This case illustrates that even if a foreign language word is a generic term in its native language, it may be treated as a coined or fanciful term in Japan if it is not commonly understood by Japanese consumers. Since French is not widely spoken in Japan, the article “le” was recognized to not be a meaningful element, and the applied-for trademark was evaluated as a whole in terms of pronunciation and impression.

“Does the presence or absence of ‘the‘ in English affect the determination of similarity?”

Consider the following appeal decisions:

These cases suggest that whether the term following “the” is generally understood by Japanese consumers can affect the similarity judgment.

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Written by Emi Ashihara, Patent and Trademark Attorney, General Manager of Trademark Group