With special thanks to trainee, Jonathan Peters, for his contribution to this blog.
The EU General Court ("GC") recently dismissed a trade mark invalidity appeal made by Safe Skies, a US-based luggage lock manufacturer.
The trade mark in dispute was TSA LOCK registered in July 2006 in classes 6, 18 and 20 for metal and non-metal locks and bags. The mark is owned by Travel Sentry Inc, a company that develops and licenses security standards.
In 2014, Travel Sentry's competitor Safe Skies LLC applied for a declaration that the TSA LOCK mark was invalid, on grounds including that it was devoid of distinctive character, descriptive, and intended to deceive the public. Safe Skies' application was rejected by the Cancellation Division. The Fourth Board of Appeal ("BoA") subsequently dismissed its appeal finding that the arguments with regard to deceptiveness lacked substance, and that Safe Skies had failed to establish that the sign was descriptive or lacked distinctiveness.
General Court's ruling
The GC dismissed Safe Skies' appeal. The key elements of its judgment were that:
- It was clear from settled case law that the GC could not be required to carry out afresh the examination which the original examiner conducted, its role being to assess whether the BoA had erred in its findings.
- Safe Skies had produced evidence that post-dated the original decision, which it was not the court's function to review. In the absence of Safe Skies providing any specific reason why the court should take such new evidence into account, the evidence would be excluded.
- The relevant date for the purpose of assessing an application for invalidity was the filing date of the contested mark, namely 7 July 2005 in this case. This was despite Safe Skies' contention that the date should be that of the registration of the contested mark (10 July 2006). Evidence adduced by Safe Skies, dated after the filing date, could therefore not be taken into account in the GC's assessment.
- The identification of the relevant public made by the BoA was correct – there was no evidence, contrary to claims by Safe Skies, that the BoA focused its assessment on the general public without taking into account both the public at large and business professionals like manufacturers and travel luggage retailers.
- The BoA had not been required to give express reasons for its findings in relation to the probative force of each item of evidence, as Safe Skies argued. Rather, the statement of reasons contained in the contested decision had been sufficient.
- Ultimately, the BoA was correct in finding that Safe Skies had failed to prove that the contested mark was devoid of distinctive character at the time of filing, or that it was likewise descriptive or deceptive.
It may seem surprising that TSA LOCK has been afforded protection as a trade mark, as many might assume that it is a generic standard for luggage locks that are approved by the US border authority, the Transportation Security Administration. It seems that the GC decision largely depended upon challenges to the admissibility of the evidence, primarily around the probative value of that evidence, the relevant dates and the relevant public.
It appears that Travel Sentry benefited from the delay in Safe Skies taking any action against the registration, having taking the invalidity action some eight years after TSA LOCK was first registered. Additionally, there was either a failure by Safe Skies to recognise that any evidence would need to predate the application date, or evidence they tried to find was unavailable.
The weakness of Safe Skies' case would seem to be corroborated by the fact that it tried to file new evidence and failed. To increase its chances of success, it could have focused on obtaining better evidence – items it produced were criticised and disregarded by the GC for being undated or illegible – and made more of the admissibility of the evidence that it put before the GC for the first time. Safe Skies did not seem to give any reasons for its admissibility and it seems that it was excluded because the GC determined that its function was not 'to review the facts in the light of documents produced for the first time before it'.
Overall, there is no surprise as to the ultimate result. The GC finding that the relevant date for the purpose of assessing validity was the application date and not the registration date is well established in case law. Moreover, Safe Skies was on the back foot challenging the validity of the registration on absolute grounds, once it has already been determined by the EUIPO. The difficulty with EUIPO proceedings is that the evidence has to be front loaded at the time of initiating the proceedings, but often there is some practical difficulty in assembling all of the evidence before the case commences.
We are aware that Safe Skies has also a pending revocation action against the same registration.