In 2005 Travel Sentry Inc. filed an application and obtained an EU trade mark registration for TSA LOCK in respect of locks for luggage, bags, backpacks, canvas backpacks, athletics bags, carry-on bags, gym bags, travel bags, beach bags, briefcases, purses, suitcases, trunks, luggage, straps for luggage, waist packs, and wallets.
In 2014 Safe Skies LLC filed an application for a declaration of invalidity of the mark on the basis that the registered mark had no distinctive character. The EUIPO Cancellation Division rejected the application and so did the EUIPO Fourth Board of Appeal. Safe Skies then appealed the decision before the General Court.
The Court clarified that the essential function of a trade mark is to be capable of identifying the commercial origin of the goods or services, allowing the consumers to repeat the purchase if the experience was positive. However, only a minimum degree of distinctive character is required and it needs to be assessed by reference to the goods or services in respect of which the registration is sought and by reference to the relevant public’s perception of the mark. Moreover, in case of trade marks comprising of various words and figurative elements, the distinctive character of each element needs to be assessed taking into consideration the whole entity. The fact that a single element, considered separately, could be descriptive does not mean that the resulting trade mark is devoid of any distinctive character.
In relation to the word ‘lock’, the Court confirmed that, as the goods covered by the trade mark were locking mechanisms, the term could not confer on the trade mark a distinctive character. However, regarding the letters TSA the Court clarified that it was for the cancellation applicant to prove that the sign was devoid of any distinctive character.
Safe Skies was not able to prove that the relevant consumer associated the abbreviation ‘TSA’ with the American agency ‘Transportation Security Administration’. Hence, the Court concluded that there was no evidence that the sign TSA was immediately perceptible as a reference to the Transportation Security Administration. For this reason, it was not apparent that the sign TSA LOCK was perceived as a generic indication of the goods bearing the mark.
In conclusion, a mark is considered generic only when there is a sufficient direct and specific relationship between the sign and the goods and services in question, which enables the public, without further investigation, to immediately perceive the sign as a description of the goods and services or one of their characteristics.
Case Ref: T-60/17
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