June 29, 2018
Safe Skies Fails to Unpick this Lock
Safe Skies Fails to Unpick this Lock
The General Court has ruled that the mark TSA LOCK, covering locks and bags, was validly registered. Safe Skies LLC (Safe Skies) applied to invalidate Travel Sentry, Inc.’s EUTM registration in 2014, but the Board of Appeal and now the General Court have both refused the application for invalidity ( decision here).

As a preliminary point of procedure, the General Court refused to consider new evidence that Safe Skies tried to adduce at this stage of the proceedings, citing that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal and not to review the facts in the light of documents produced for the first time before it.

In assessing whether TSA LOCK lacked distinctiveness, the General Court confirmed that LOCK has a generally understood meaning in connection with the goods in question, which was not surprising.  However, with respect to the letters TSA, the General Court firstly held that the relevant date for assessing whether the relevant public understood that group of letters as an abbreviation for the Transportation Security Administration or as a reference to that American agency was the date on which the challenged EUTM was filed, and not the date it was registered (as Safe Skies had claimed). A similar conclusion has been reached in previous decisions. Once this was established, the General Court held that the majority of the evidence filed by Safe Skies was insufficient and dated outside of the relevant period, and did not demonstrate that the relevant public understood that the letters TSA referred to the Transportation Security Administration or as a reference to that American agency.

Once the General Court decided this point, it all unravelled for Safe Skies. The General Court agreed with the Board of Appeal that the mark was also not considered descriptive. Whilst there was evidence regarding use by Safe Skies on its own website of the expression “TSA luggage locks” and “TSA patented locks”, the General Court held that this was not enough to allow the descriptive nature of the contested mark to be demonstrated, unless the public understood the abbreviation TSA. Moreover, because Safe Skies could not establish that the relevant public understood the letters TSA as being the Transportation Security Administration, it was held that the public also could not possibly be misled as to the origin of the goods bearing the contested mark, since the mark in question had no association in the public’s consciousness with a particular origin. The General Court thus agreed with the Board of Appeal that there would not be any likelihood of deceit that could arise from the mark TSA LOCK, and dismissed the proceedings in their entirety.

There is not a lot that was new in this case but it serves as a good reminder of the challenges parties can face with respect to evidence.  Safe Skies’ evidence was found wanting at every turn: it attempted to adduce new evidence at the General Court stage (too late and ultimately denied), and much of the evidence that was considered in the proceedings was not acceptable because it fell outside of the relevant date or did not relate to the relevant consumer. The result of this decision was not surprising on the strength of the evidence that Safe Skies did manage to get through in this case. It is also not surprising that the General Court confirmed again that the relevant date for the purposes of assessing the validity of a challenged EUTM registration is the application date and not the registration date.

We are aware that Safe Skies has also filed a pending revocation action against the same registration, and we await the decision in that case.
Trademarks /  Travel /  Disputes

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