The Trial Board of Japan Patent Office (JPO) recently upheld The Boeing Company’s invalidation petition against TM Reg. no. 5990529 for the “PACHINKO&SLOT AIRPORT 777” mark in respect of amusement services in class 41 due to a likelihood of confusion with Boeing’s famous jet airliner “777”.
[Invalidation case no. 2018-890054, Gazette issue date: May 31, 2019]
Mark in dispute, consisting of three terms, “PACHINKO&SLOT” and “AIRPORT777” in English and Japanese in three lines, and a device of jet airliner (see below), was applied for registration by SEA Co., Ltd., a Japanese business entity, on February 17, 2017 in respect of providing Pachinko and slot machine parlors, game services provided online from a computer network or mobile phone; providing amusement facilities and other services in class 41.
SEA CO., Ltd. has been operating pachinko and slot machine parlors in the name of AIRPORT 777.
Without confronting with a refusal during substantive examination, the AIRPORT 777 mark was registered on October 20, 2017.
Petition for Invalidation
Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).
The Boeing Company, the world’s largest American aerospace company and leading manufacturer of commercial jetliners, defense, space and security systems, and service provider of aftermarket support, filed a petition for invalidation against opposed mark on July 17, 2018. Boeing argued the AIRPORT 777 mark shall be invalidated due to a likelihood of confusion with “777” The Boeing 777 when used on above designated services in class 41 based on Article 4(1)(xv) of the Trademark Law.
The Boeing 777 is the world’s largest twin-engine jet airliner, first flown in June of 1994. Commonly referred to as the ‘Triple Seven,’ the 777 is Boeing’s first fly-by-wire airliner (an electronic system that replaces the conventional manual flight controls of an aircraft) and the first commercial aircraft entirely computer-designed.
In Japan, Boeing has successfully registered three digits “777” in respect of jet airliners in class 12 since 2001. Trademark Registration no. 4456004 (see below).
The Board admitted that the “777” mark has acquired a high degree of popularity and reputation as a source indicator of Boeing jetliners among relevant consumers.
In assessment of the similarity between two marks, at the outset the Board found that three digits 777 implies a meaning of wining jackpot in association with pachinko and slot machines. However, by taking account of a term “AIRPORT” and a silhouette of jet airliner, the Board considered it is likely that relevant consumers with an ordinary care shall connect or associate the services using opposed mark with The Boeing 777. If so, it is unquestionable that opposed mark is highly similar to a famous mark “777”. Besides, since recent game and amusement industry have a trend to introduce flight and airplane games with new technology or to use images, video and sounds of jet airliner, it is not unreasonable to find above services in class 41 are closely related to jet airliners. In view of Boeing’s business portfolio, it is highly predictable that The Boeing Company expands the business and launches amusement business.
Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Boeing or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(xv).