Safe Skies trademark complaint fails to take flight
The EU General Court has dismissed a trademark invalidity appeal made by padlock manufacturers Safe Skies.
The trademark at the centre of the dispute is ‘TSA Lock’ (EU trademark number 004,530,168), which was registered in July 2006.
Safe Skies’ competitor Travel Sentry owns the mark, which falls under classes 6, 18 and 20 covering metal locks, bags, and non-metal locks.
Both companies deliver security solutions to luggage during transportation.
In 2014, Safe Skies opposed the trademark, on the ground that the terms ‘TSA’ and ‘lock’ had no distinctive character. It said that the letters ‘TSA’ stand for American Transportation Security Administration, something which the relevant public would recognise.
The application was dismissed by the European Union Intellectual Property Office’s (EUIPO) Cancellation Division in December 2015, prompting Safe Skies to file a notice of appeal with the EUIPO.
But, the EUIPO’s Fourth Board of Appeal dismissed the appeal in November 2016, finding that Safe Skies had “failed to establish that the sign at issue is descriptive or devoid of any distinctive character”.
On appeal at the General Court, Safe Skies argued that the Board of Appeal was wrong to find that its evidence wasn’t sufficient to prove that the ‘TSA Lock’ trademark was devoid of any distinctive character.
Safe Skies also argued that its evidence was sufficient to prove that the relevant public understood the TSA sign to be an abbreviation for the security administration.
It claimed that the expression “TSA lock” is a term used by other companies, including itself, in the transport industry.
Safe Skies added that the board focused its analysis on the general public, and not business professionals, which led the appeal board to the wrong conclusion.
But, the General Court sided with the EUIPO, finding that Safe Skies had failed to establish that the relevant public would associate the letters “TSA” with the American Transportation Security Administration.
“If the public does not make such an association, it cannot be held that it will be misled as to the origin of the goods bearing the contested mark, since the sign in question will have no association in the public consciousness with a particular origin,” said the court.
The General Court dismissed the appeal and ordered Safe Skies to pay all the costs.
Clarification: Safe Skies has been in touch asking us to clarify that the court's decision pertained only to 2005, when the ‘TSA Lock’ mark was applied for, and that the court did not consider later evidence offered by the company. It also asked us to make clear that it has launched a revocation action against the mark. Safe Skies clarified that in June 2017 it filed an additional invalidity request with the EUIPO seeking to revoke ‘TSA Lock’ because it has become a common name since the trademark was registered and no longer suitably serves as an indication of origin. Safe Skies also explained that it filed an appeal against the General Court decision with the Court of Justice of the European Union on May 16, 2018. We are happy to make these clarifications.
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