5 April 2018

Lock Horror: Safe Skies fails to unpick “TSA Lock” trade mark

There is a temptation when reading Court Judgments to look at the outcome and scoff at the individuals handling the case thinking “I could have done better than that” or “what on earth were you thinking arguing that? “. But none of us was faced with the situation as to what evidence their client was able to provide, the degree of effort the client allowed the lawyer to put into case and so on.

Lock Down

Following the 9/11 terrorist attacks, the US government set up the Transportation Security Administration (“TSA”) in November 2001: their existence being signed into law by President George W Bush. One of the primary tasks for the TSA was to beef up airport security. As part of that, the TSA had the power to open suitcases etc. irrespective of whether they were locked or not. I am sure I am not the only person to have had his suitcase unlocked only to find on returning home that the TSA had left a leaving card explaining that they had opened my luggage and searched it.

Early on in their formation, the TSA authorised two lock manufacturers to create locks that the TSA could open: the point being to have passenger’s utilise these locks which (so the theory went) would protect the public from theft by others, but enable the TSA to inspect anything that they considered to be suspicious. The two companies were Travel Century Inc (“Travel Century”) and Safe Skies LLC (“Safe Skies”). It is fair to say that the relationship between these two companies has been poor right from the start, and that there have been claims and counterclaims in actions for patent infringement raging between the two parties.

Against that background, on 7th July 2005 Travel Century applied to register at the EUIPO the trade mark “TSA Lock” for metal locks for luggage (class 6), bags, backpacks, luggage, luggage straps etc in class 18, and non-metal locks for luggage in class 20. The mark was registered on 10th July 2006.

It was not until the 15th April 2014 that Safe Skies realised what Travel Century had done and made an application to the EUIPO to invalidate the “TSA Lock” trade mark registration. The grounds cited were Article 52 (1)(a) Regulation 207/2009 (now Article 59 (1)(a) of Regulation 2017/2001) read in conjunction with Article 7(1)(b),(c),(d),(g) and (i) in relation to all of the goods registered. In other words Safe Skies argued on absolute grounds that the mark was: devoid of distinctive character, descriptive, common in the trade, likely to deceive the public (as to nature quality or geographical origin) and covered by Article 6ter Paris Convention (prohibited signs/emblems).

Arm Lock

From the Cancelation Division upwards, including the General Court, all of the grounds and the evidence were rejected. As all the grounds relied on related to absolute grounds for refusal, the relevant date for these purposes was the date of filing the mark for registration namely, 7th July 2005. Rejection of the evidence is, perhaps, unsurprising, since all of the evidence appears to post-date the filing date. This does not, of course, automatically mean it would be discarded or discounted, since it may refer to matters having occurred prior to the relevant date. However, it is inevitably going to make the task all the more difficult to prove a factual situation existed prior to the relevant date.

The ‘devoid of distinctive character’ ground seemed doomed to fail from the very beginning, because while “Lock” would clearly be non-distinctive (and is considered descriptive) in relation to some of the goods, the use of the initials “TSA” would inevitably be sufficient to push the mark over the line in relation to registrability and so avoiding being devoid of distinctive character.

The descriptive ground would only work if, at the relevant date, the relevant public would understand that “TSA” was an abbreviation of the US organisation. Again, the evidence all post- dated the relevant date. Moreover, it did not establish that the relevant public, on seeing the mark, would make a sufficiently direct and specific connection between the sign and the goods or services in question, which would enable them immediately to perceive (without further reflection) a description of the goods or services in question or one of the characteristics of those goods/services.

The likely to deceive the public ground ((g)) was argued on the basis that the public would consider that the TSA had somehow authorised or licenced the goods or that they were the TSA’s goods. However, and as for the descriptive ground, this could only work if the relevant public would understand what the initials “TSA” referred to, and as previously held by the Court, they did not consider this to be the case.

The grounds of “common in the trade” and “protected emblems” were not appealed and so were not a part of the Court’s judgment.

Lock of the draw?

As expressed above, without knowing what went on as between client and lawyer, it is possibly unfair to comment critically. However, given that just about every possible argument was used to invalidate the mark, it does beg the question as to why ”bad faith” was not also used. This is all the more so given the jurisprudence of the CJEU originating in the Lindt Bunny decision (Case C-529/07 Lindt & Sprüngli v Franz Hauswirth – a referral from the Austrian Supreme Court), in which the factors to be taken into account when considering the issue of “bad faith” being:-

  1. Whether the applicant knew or should to have known that a third party was using the identical or similar mark;
  2. Whether there was an intension to prevent a third party from using or continuing to use that mark; and
  3. the degree of legal protection both party’s signs had at the relevant date.

Admittedly, the Lindt Bunny decision does refer to matters within the EU, but these factors have since been expanded in other cases and it would be somewhat surprising if a search in the UK and Ireland did not turn up some relevant material before the relevant date. This ground may still be worth pursuing not least because it is not res judicata.

The approach of the General Court in this case cannot be faltered in anyway: they simply did what they had to based on the evidence provided to them and applying previous EU case law. It must have been quite frustrating for the judges since it is highly likely they would of travelled to the US and be aware of the TSA organisation. It may also be that despite the best efforts of Safe Skies and their lawyers, there simply wasn’t any evidence around, hard to believe though that may be. Perhaps only persuading the TSA organisation itself either to bring appropriate proceedings or else provide suitable evidence will justice actually be done in this case.

All is not necessary lost for Safe Skies, since Travel Century would still need to seek to enforce their EU mark and there are certainly ways and means of having the issue decided before Safe Skies even contemplate selling goods under the identical mark in the EU (at least in so far as the English Courts are concerned).

Perhaps after this decision the two parties will stop fighting each other, so instead of “lock, stock and two smoking barrels” it becomes more “the friendly skies”!