The General Court of the European Union had recently decided on a case involving two American based companies, the first Safe Skies, the other, Travel Sentry Inc. The former is a New York Based company in the business of security products, including luggage straps, TSA liberty bell, flower power, camouflage, aero, patriot locks and other related products; and latter, is the company that develops and licenses standards used in travel security, including a standard for luggage locks that can be opened by aviation security agencies such as the Transportation Security Administration.
The contested trade was the then Community Trade Mark (now European Union Trade Mark) No.: 4 530 168; “TSA LOCK” registered in Class 6, 18 and 20, filed on July 7, 2005, and registered on July 10, 2006.
The Application Of Invalidity
The dispute began in April 2014, when Safe Skies applied to then Office for Harmonisation in the Internal Market (now European Union Intellectual Property Office) for a declaration of invalidity against the “TSA LOCK” trade mark. Safe Skies argued that the “TSA LOCK” trade mark was descriptive, non-distinctive, has become part of everyday language and is generic, misleading, and that “TSA” is the official abbreviation of the Transport Security Authority.
The case files at the European Union Intellectual Property Office indicates that Safe Skies had filed vast amounts of evidence in support of its declaration of invalidity, but nonetheless, the Cancellation Division rejected the declaration of invalidity.
It is standard procedure, in invalidity proceedings, that the Cancellation Division will not carry out its own research, but will limit itself to analysing facts, arguments and evidence submitted by the parties. Notwithstanding, this does not preclude the Cancellation Division from taking into consideration facts that are well known, which are likely to be known by anyone or can be learned from generally accessible sources. Furthermore, as the case was for a declaration of invalidity, the facts and arguments must date from the period when the trade mark application was filed, which was July 7, 2005, but any facts relating to a subsequent period might also allow for conclusions to be drawn pertaining to the situation at the time of filing.
The Cancellation Division decided that the vast amounts of evidence submitted by Safe Skies was insufficient to support each and every ground of invalidity raised in its declaration of invalidity. Safe Skies had failed to show compelling evidence that the “TSA LOCK” trade mark fell foul of each of the grounds of invalidity claimed, at the time of the date of filing of the trade mark, which was July 7, 2005.
A substantive amount of the arguments related to the Transport Security Administration and/or the abbreviation relating to it, TSA. As a result, the Cancellation Division indicated that the average consumer in the Europe is not necessarily aware of the specific government agencies outside of the European Union, such as the TSA, but the average consumer might be aware of abbreviations which appear regularly in the mass media, such as, NASA, FBI and CIA.
Adamant that the trade mark was susceptible to be declared invalid, and that the Cancellation Division had made a wrong decision, Safe Skies lodged an Appeal on February 2016 with the Boards of Appeal. Once again, Safe Skies filed additional evidence in its Appeal, in an attempt to indicate that the term “TSA LOCK” was purely deceptive in 2016.
The Boards of Appeal indicated that the Cancellation Division did not make a wrong decision, and that the vast majority of the evidence concerned a point of time that was after the relevant date, which was the date of filing, and nothing allowed for an inference that, at the relevant date, the “TSA LOCK” trade mark was either descriptive of its relevant goods or otherwise non-distinctive. The Boards of Appeal also noted, amongst others, that the fact that major airlines such as Lufthansa need to answer the question “what is the TSA?” in 2015, is indicative of the fact that even at this date, there is a need to explain to the relevant public what these abbreviations signify in the context of international level.
Finally, it is generally accepted that there is no need for the Cancellation Division to explicitly refer to every piece of evidence filed, nor is the Boards of Appeal under any obligation to do so. None of the evidence, including those filed upon appeal, indicated that at the relevant time, the relevant public in the European Union would have perceived the “TSA LOCK” trade mark as being purely descriptive or otherwise lacking distinctive character.
Safe Skies ultimately lost the appeal as the Boards of Appeal correctly dismissed the appeal.
The Decision At The General Court
Safe Skies took a final stab at the issue and applied to the General Court of the European Union to annul the decision at the Cancellation Division.
At this juncture, Safe Skies limited its arguments to three grounds, that the “TSA LOCK” trade mark was descriptive, non-distinctive, and it was a misleading sign capable of deceiving the public.
Once again, Safe Skies reproduced the evidence submitted in the earlier stages of the dispute, and in addition, submitted new evidence for the first time before the General Court. The General Court indicated that its function is to review the legality of decisions of the Boards of Appeal, and it was not the function of the General Court to review the facts, in light of documents or evidence produced for the first time before it. The review of the contested decision was to be carried out, in light solely of the evidence which was produced during the proceedings as it appears in the European Union Intellectual Property Office case files.
The General Court laid down the following:-
(i) The distinctive character and/or descriptive nature of a trade mark must be assessed by reference to the goods and/or services in respect of which registration is sought, and, reference to the relevant public’s perception of the trade mark at the time of the date of filing. The relevant public here is reasonable well informed and reasonably observant and circumspect.
(ii) The distinctiveness and/or descriptiveness of a trade mark may be assessed in part, but must, depend on an appraisal of the trade mark as a whole. The mere fact that each of those terms and/or elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such a character.
In both instances, the General Court decided that the Boards of Appeal was correct in its decision.
In addition, the General Court found that the term “TSA LOCK” cannot be misleading since Safe Skies had failed to prove that the term “TSA Lock” was understood in the relevant territory, at the date of filing of the “TSA LOCK” trade mark, as a reference to the American Transportation Security Administration.
Cause And Effect
The result at the General Court was unsurprising when the action was dismissed in its entirety. A review of all the three cases, the evidence, the arguments submitted by Safe Skies, and the decisions, was unequivocal in that Safe Skies had failed to prove that the “TSA LOCK” trade mark was capable of being declared invalid pursuant to the grounds that it had raised.
It was apparent that Safe Skies did expand significant amount of time collating evidence for all the stages, the evidence submitted was, vastly inadequate to show that the “TSA LOCK” trade mark was capable of being declared invalid, at the time of its filing date. On more than one occasion, the various courts had explicitly repeated these sentiments.
Furthermore, it is apparent that Safe Skies had failed to consider that the average consumer within the European Union, is still, not necessarily familiar with the names of specific agencies prevalent outside of the European Union. Presumably, in the converse, just like the average consumer within the United States would not be familiar with specific European Union agencies.
All this time and financial costs incurred by Safe Skies have gone to nought. The lesson to take from this decision, and the dispute that began in 2014, is that, it does not matter how much evidence is submitted. As a party initiating invalidity proceedings, you have to ensure specific pre-requisites, which adhere to the EUTMR and settled case law, in order to ensure that the grounds of invalidity you are claiming will be successful.
Inundating the applicant with heaps of irrelevant evidence will only get you so far, and most of all, it will cost you significant time and financial costs, which is better expanded in actually collating quality evidence.