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Bottom line: The Board found PASTE-IT for stationery is likely to cause confusion with Post-it known for sticky notes and falls under Section 4-1-15.

S.T. Sangyo Co., Ltd. filed an application for PASTE-IT for stationery in July 2008, which was registered in July 2010.  In 2013, 3M Company filed an invalidation action against PASTE-IT citing its marks: Post-it, POST-IT, its phonetic equivalent in katakana and POST-IT logo based on Section 4-1-11, 4-1-10, 4-1-15 and 4-1-19.

With evidences submitted by 3M Company, which includes evidence of use of Post-it in Japan since 1981, various advertising materials and annual turnover of Post-it products in Japan from 2000 to 2008, the Board recognized that Post-it was well-known in Japan for sticky notes at the time of both filing and registration of the alleged mark PASTE-IT.

The Board turned to assessment of likelihood of confusion.  In this connection, the Board refer to the decision of Supreme Court below:

Supreme Court, Case No. H3 (O) 1805, (September 22, 1992):
Similarity between trademarks is determined based on comprehensive consideration of the impression, recollection, association, etc. created by the appearance, connotation, sound, etc. of a trademark.  So far as the actual transaction of goods are known, specific trading conditions should be considered.  Similarity may be found by factors such as transactional conditions even if appearance, connotation and sound are not similar independently, and accordingly comprehensive determination of similarity in appearance, connotation and sound may also depend on transactional conditions.

<As for PASTE-IT>
The alleged mark comprises two English words.  PASTE is synonym for glue and also commonly used as a computer jargon.  IT is a basic English pronoun “it” and also an abbreviation of “information technology”.  The alleged mark designates stationery, including sticky notes which Post-it is known for.  Thus, when the alleged mark is used for stationery including sticky notes, coupled with the hyphen in-between, traders and purchasers will likely recognize IT portion as a pronoun rather than abbreviation of “information technology”, being strongly affected by Post-it and associating PASTE-IT with Post-it.  Accordingly, the natural sound derived from PASTE-IT will be [pe:-su-to-i-tto].

Likewise, the meaning of PASTE-IT will be literally “paste it” (rather than “paste information technology”).

<As for Post-it>
The sound of Post-it is known as [po-su-to-i-tto].  Due to the fame of Post-it, Japanese traders and purchasers will recollect and associate it with sticky notes.

<Comparison>
The sound of the marks at issue [pe:-su-to-i-tto] and [po-su-to-i-tto] differ at the beginning, where [pe:] and [po] has consonant [p] in common but differ in vowel [e] and [o] and with/without the prolonged sound.  While the difference of the first sound cannot be disregarded, the marks share the rest of the sound in common, which leaves the possibility of confusion in sound.

The connotation of “paste it” and “sticky notes” are somewhat related.

The marks PASTE-IT and Post-it differ in spelling and letter case, but similarity overweighs difference.

Taking the fame of Post-it into consideration, the Board found that PASTE-IT and Post-it are highly similar based on comprehensive consideration of the impression, recollection, association, etc. created by the appearance, connotation, sound, etc. of the marks.

<Other factors>
The Board noted that Post-it, though each word is commonly known, is not a common phrase or idiom, and the mark has high originality.

The relevant traders and purchasers of the marks at issue are obviously in common.  And the purchasers of the goods are wide range of general consumer irrespective of age or sex, who do not always pay close attention to the mark when purchasing the goods.

With the above findings, i.e. fame of Post-it, high similarity of the marks at issue, originality of Post-it, and common consumer and their level of attention, the Board concluded that PASTE-IT is likely to cause confusion with Post-it, and falls under Section 4-1-15.

And so the Board found 3M’s invalidation action reasonable and revoked the registration for PASTE-IT.