JUDGMENT OF THE GENERAL COURT (Third Chamber)
22 March 2018 (*)
(EU trade mark — Invalidity proceedings — EU word mark TSA LOCK — Absolute grounds for refusal — Distinctive character — Lack of distinctive character — Article 7(1)(b), (c) and (g) of Regulation (EC) No 207/2009 (now Article 7(1)(b), (c) and (g) of Regulation (EU) 2017/1001))
In Case T‑60/17,
Safe Skies LLC, established in New York, New York (United States), represented by V. Schwepler, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Travel Sentry, Inc., established in Windermere, Florida (United States), represented by J.L. Gracia Albero and V. Torelli, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 November 2016 (Case R 233/2016-4), relating to invalidity proceedings between Safe Skies and Travel Sentry,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 31 January 2017,
having regard to the response of EUIPO lodged at the Court Registry on 31 March 2017,
having regard to the response of the intervener lodged at the Court Registry on 10 April 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 7 July 2005, the intervener, Travel Sentry, Inc., SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign TSA LOCK.
3 The goods in respect of which registration was sought are in Classes 6, 18 and 20 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 6: Metal locks (for luggage);
– Class 18: ‘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’;
– Class 20: Non-metal locks (for luggage).
4 The mark applied for was registered on 10 July 2006 under number 004530168.
5 On 15 April 2014, the applicant, Safe Skies LLC, filed an application for a declaration that the contested mark was invalid pursuant to Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b), (c), (d), (g) and (i) of that regulation (now Article 7(1)(b), (c), (d), (g) and (i) of Regulation 2017/1001), in respect of all the goods referred to in paragraph 3 above.
6 On 11 December 2015, the Cancellation Division rejected the application for a declaration of invalidity.
7 On 3 February 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
8 By decision of 24 November 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal, deeming that the applicant’s arguments with respect to Article 7(1)(g) and (i) of Regulation No 207/2009 lacked substance and that those provisions did not apply in the case. The Board of Appeal also considered that the arguments of the applicant with respect to Article (7)(1)(d) of that regulation were not relevant inasmuch as they were based on confusion between a declaration of invalidity pursuant to Article 52(1)(a) and an application for a declaration of revocation under Article 51(1)(b) of that regulation (now Article 58(1)(b) of Regulation 2017/1001). Finally, the Board of Appeal found that the applicant had failed to establish that the sign at issue is descriptive or devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009. In that respect, the Board of Appeal held that the relevant date for the purposes of assessing the case was that on which the application for registration of the contested EU trade mark was filed and that none of the evidence produced by the applicant was sufficient to prove that, on the relevant date, the sign was perceived by the relevant public as descriptive or devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs incurred in the proceedings before the Court and order the intervener to pay the costs of the administrative proceedings before the Board of Appeal.
10 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 In support of its action, the applicant relies on three grounds, alleging an infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b), (c) and (g) thereof.
12 Under Article 52(1)(a) of Regulation No 207/2009 an EU mark will be declared invalid on application to EUIPO where it has been established that it was registered contrary to the provisions of Article 7 of that regulation.
Admissibility of Annexes A.19 and A.20
13 It should be pointed out that the evidence provided in Annexes A.19 and A.20 to the application post-dates the contested decision. Accordingly, it could not be produced in the proceedings before EUIPO and was submitted for the first time before the Court. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the review of the contested decision is to be carried out in the light solely of the evidence which was produced during the administrative proceedings as it appears in EUIPO’s case file (see, to that effect, judgments of 15 July 2014, Łaszkiewicz v OHIM — Cables y Eslingas (PROTEKT), T‑18/13, not published, EU:T:2014:666, paragraph 20, and of 13 September 2016, Globo Comunicação e Participações v EUIPO (Sound mark), T‑408/15, EU:T:2016:468, paragraph 20). Accordingly, since the applicant has also failed to provide any specific reason as to why the Court should take that evidence, produced for the first time before it, into account, the abovementioned items of evidence must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
The first plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof
14 The applicant claims, in essence, that the Board of Appeal was wrong in finding that none of the evidence was sufficient to prove that, on the relevant date, the TSA LOCK mark was devoid of any distinctive character.
15 First, the applicant claims that the relevant date for the purpose of assessing an application for invalidity based on Article 7 of Regulation No 207/2009 is that of the registration of the contested mark, namely 10 July 2006 in this case. The applicant also criticises the Board of Appeal for having focused its analysis on the general public after having found that the goods were directed at both the general public and business professionals, in particular manufacturers and retailers in the luggage and suitcase sector and for having analysed the evidence solely from that perspective, which led it to draw the wrong conclusion. Moreover, the applicant submits that the evidence it produced is sufficient to show that the expression ‘tsa lock’ was not recognised as a mark in the trade. Finally, the applicant submits that the Board of Appeal did not examine all of the evidence produced.
16 EUIPO and the intervener dispute the applicant’s arguments.
17 According to Article 7(l)(b) of Regulation No 207/2009, a trade mark which is devoid of any distinctive character is not to be registered.
18 According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see, to that effect, judgments of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 33, and of 21 January 2011, BSH v OHIM (executive edition), Case T‑310/08, not published, EU:T:2011:16, paragraph 23).
19 It is clear from the case-law that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 39, and of 23 January 2014, Novartis v OHIM(CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 13).
20 Distinctive character must be assessed, first, by reference to the goods or services in respect of which registration was sought and, second, by reference to the relevant public’s perception of the mark, that public being reasonably well informed and reasonably observant and circumspect (judgments of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, p. 43; of 31 March 2004, Fieldturf v OHIM(LOOKS LIKE GRASS... FEELS LIKE GRASS... PLAYS LIKE GRASS), T‑216/02, EU:T:2004:96, paragraph 26; and of 12 May 2016, GRE v EUIPO(Mark1) T‑32/15, EU:T:2016:287, paragraph 29).
21 It is also clear from settled case-law, that in invalidity proceedings, EUIPO cannot be required to carry out afresh the examination which the examiner conducted, of his own motion, of the relevant facts which could have led him to apply the absolute grounds for refusal. It follows from the provisions of Articles 52 and 55 of Regulation No 207/2009 (now Articles 59 and 62 of Regulation 2017/1001) that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. By virtue of that presumption of validity, EUIPO’s obligation, under Article 76(1) of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners of EUIPO and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. However, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgments of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM — Castel Frères(CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 and 28, and of 28 September 2016, European Food v EUIPO — Sociétés des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:586). In the present case, it was thus for the applicant to provide sufficient evidence to show the failure of the registration of the contested mark to comply with Article 7 of Regulation No 207/2009.
22 It is necessary to examine, in the light of those considerations and having regard to the assessment set out by the Board of Appeal in the contested decision, the applicant’s submissions regarding infringement of Article 7(1)(b) of Regulation No 207/2009.
23 First, as regards its arguments concerning the taking into account of new developments during the registration procedure, the following should be noted.
24 With regard to the relevant period to be considered for the analysis of the evidence, the applicant claims that the Board of Appeal erred, in paragraphs 16 to 18 of the contested decision, in holding that the relevant date for the analysis of Article 7 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation, is that of the filing of the contested mark, namely 7 July 2005 in this case, whereas the relevant date should in fact be that of the registration of that mark. In that respect, it claims, first, that the case-law allows for material subsequent to the date of filing of the application for registration to be taken into account provided that it enables conclusions to be drawn on the situation as it was on that date, and that explicit reference is made to the registration of the mark in Articles 7 and 52 of Regulation No 207/2009.
25 However, as EUIPO points out and according to settled case-law, the only relevant date for assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application for the contested mark. The fact that the case-law allows subsequent material to be taken into account, far from weakening that interpretation of Article 52(1)(a), reinforces it, since that taking into account is only possible where that material relates to the situation at the date of filing of the trade mark application (see, to that effect, order of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraphs 52 and 53; Frosch Touristik v OHIM — DSR touristik(FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraphs 18 and 19; and of 26 February 2016, provima Warenhandels v OHIM — Renfro(HOT SOX), T‑543/14, not published, EU:T:2016:102, paragraph 44). In the present case, the Board of Appeal was therefore correct to hold that the relevant date for assessing the conformity of Article 7 of Regulation No 207/2009 of the contested mark was that on which the application for registration was filed, namely 7 July 2005.
26 First, in that respect, the evidence attached to the observations of 15 April 2014 and reproduced as items 1, 2 and 10, the evidence attached to the observations of 20 August 2014 and reproduced as items 1, 3 and 4, the evidence attached to the observations of 21 November 2014 and reproduced as items 1, 3 and 5, the evidence attached to the observations of 13 and 18 May 2015, and reproduced as items 1 to 9, 11 to 15 and 19 to 23, as well as the evidence attached to the observations of 8 and 11 April 2016 and reproduced as items 27, 28, 31, 32, 34 to 37, 39 to 45, 47, 49 and 51 are all dated after the filing of the application for registration, namely 7 July 2005, and all contain material which does not relate to the situation at the date of the filing of the application for the contested mark. Therefore, that evidence may not be taken into account to assess the conformity of the contested mark with Article 7 of Regulation No 207/2009.
27 Secondly, the evidence attached to the observations of 21 November 2014 and reproduced as item 2, the evidence attached to the observations of 13 and 18 May 2015, and reproduced as items 10 and 24 and the evidence attached to the observations of 8 and 11 April 2016 and reproduced as items 29, 52 and 53 do not contain any material that would allow a determination of their dates or establish that they relate to the situation at the date of the filing of the application for the contested mark. Therefore, that evidence may not be taken into account to assess the conformity of the contested mark with Article 7 of Regulation No 207/2009.
28 In the second place, as regards the applicant’s argument that the Board of Appeal was mistaken in focusing its assessment on the general public and that by so doing it drew the wrong conclusion, the following must be considered.
29 It should be pointed out, first, with respect to the identification of the relevant public, that the goods covered by the contested mark were targeted both at the general public and at specialists, in particular luggage manufacturers and retailers in the luggage sector. Consequently, the relevant public consists of average, reasonably well informed and reasonably observant and circumspect consumers. Furthermore, Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001) states that paragraph 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Since the contested mark comprises a word with an English meaning, any assessment of whether there are absolute grounds for refusal must be assessed in relation to English-speaking consumers in the Union.
30 In connection with the first ground of appeal, it is for the applicant to prove that the trade mark at issue lacks distinctiveness for the purposes of Article 7(1)(b) of Regulation No 207/2009, having regard to the perception by the relevant public, as so defined, of that mark.
31 It should be pointed out, next, that the argument of the applicant that the Board of Appeal focused its assessment on the general public is in no way substantiated in the application. In that respect, the imprecision in the wording it used in submitting that ‘the Board of Appeal seems to focus primarily on the general public’ should be noted along with the absence of any explanation of what led it to such a conclusion. The applicant merely states in paragraph 54 of the application that the Board of Appeal ‘did not differentiate between the two categories of persons which form the relevant public’. The terms of the contested decision, however, do not exclude a conclusion that such a differentiation was in fact made. Thus, in paragraph 19 of that decision, the Board of Appeal deems that ‘the relevant goods are directed both to the public at large in these Member States and to business professionals, for example manufacturers and retailers in the field of travel luggage’. Furthermore, and contrary to what the applicant maintains, it is not apparent at all from paragraphs 22 and 23 of the contested decision, in which the Board of Appeal refers to the relevant public, that that public does not include professionals, to whom, as it pointed out, the relevant goods were partly directed, as recalled above.
32 The applicant has therefore failed to demonstrate how the Board of Appeal based its appraisal on a false assessment of the relevant public.
33 In the third place, as regards whether the trade mark in question is devoid of any distinctive character, it must be recalled that, in the case of trade marks comprising various word elements and figurative elements, the distinctiveness of each of those terms or elements, taken separately, may be assessed, in part, but must, in any event, depend on an appraisal of the whole which they comprise. The mere fact that each of those terms or elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such a character (judgments of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 28, and of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 29).
34 In that respect, first, the contested mark contains the word ‘lock’, which is generally understood to mean a ‘locking mechanism’ or ‘padlock’, goods for which, inter alia, the contested mark is registered in Classes 6 and 20. That word, to the extent that it informs the relevant public that the goods covered by the trade mark in issue concern locks and thus is not apt to distinguish them from those of other undertakings, cannot confer on the contested mark a distinctive character (see, to that effect, judgment of 15 January 2015, MEM v OHIM(MONACO), T‑197/13, EU:T:2015:16, paragraph 67).
35 However, as regards the group of capital letters ‘TSA’, also found in the contested mark, it should be pointed out that it is for the applicant to prove that, on the relevant date, the relevant public understood that group of letters as an abbreviation for the Transportation Security Administration or as a reference to that American agency.
36 In that regard, the applicant claims, in particular, that it produced ample evidence that confirms that the abbreviation TSA is ‘in common use in relation to international travel and luggage’. It adds that ‘third parties, in particular luggage manufacturers, use the sign ‘TSA Lock’ as a technical product description and not as a trademark’. Finally, it claims that it possesses evidence capable of showing that the English word ‘lock’ is purely descriptive for any kind of lock and items which can be closed by a lock and that the capital letters ‘TSA’ indicate the Transportation Security Administration.
37 However, it should be pointed out that, for the reasons set out in paragraphs 26 and 27 above, the bulk of that evidence cannot be regarded as relevant for the assessment of the Court. Thus, of the evidence produced by the applicant and referred to in paragraphs 59, 60 and 62 of the application, only items 30 and 38 may be partially taken into account, as is apparent from paragraph 38 below. Items of evidence 10 and 29 are undated, item of evidence 39 is illegible, whilst the other items of evidence relate to dates subsequent to that of the relevant period.
38 Items of evidence 30 and 38 consist, respectively, of clippings from European newspaper and magazine articles, which use the abbreviation ‘TSA’ to refer to the Transportation Security Administration, and printouts from the applicant’s website. As regards the items of evidence relating to the relevant period of assessment, it must be held that those few extracts are not sufficient to demonstrate that, on the date of the filing of the contested mark, the relevant public understood the letters ‘TSA’ contained in the contested mark as an abbreviation for the Transportation Security Administration or as a reference to that American agency, as the Board of Appeal rightly held.
39 As there is no proof that the relevant public associates the abbreviation with the agency at issue, that abbreviation lacks meaning that is immediately perceptible by the relevant public. Therefore, the contested mark could not be understood by that public as a reference to the Transportation Security Administration.
40 It follows from the foregoing that, contrary to what the applicant contends, it is in no way apparent from an overall examination of the word sign TSA LOCK that the trade mark at issue was perceived by the relevant public at the date of filing of the application for registration as being devoid of distinctive character.
41 The appellant’s first plea must therefore be rejected as unfounded.
The second plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof
42 The applicant submits that the Board of Appeal was wrong in holding that none of the evidence produced shows that, on the relevant date, the relevant public perceived the contested mark as purely descriptive of the goods for which registration was sought. In that respect, the applicant argues that the Board of Appeal did not examine all of the evidence presented. The applicant submits, next, that the evidence it presented is sufficient to prove that the relevant public understood the TSA sign as an abbreviation for the American Transportation Security Administration. Finally, the applicant believes that it has proven that the expression ‘tsa lock’ was used by others to describe the luggage it marketed.
43 EUIPO and the intervener dispute the applicant’s arguments, claiming, in essence, that there is no evidence in the file that, on the date of the filing of the trade mark application, that mark was perceived as descriptive of the goods and services sought by the relevant public.
44 Under Article 7(l)(c) of Regulation No 207/2009 registration is to be refused for trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. According to Article 7(2), Article 7(1) applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.
45 Article 7(1)(c) of that regulation pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all. Article 7(1)(c) therefore prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (see, to that effect, judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 24 and 25; of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30 to 32; and of 21 January 2015, Grundig Multimedia v OHIM(GentleCare), T‑188/14, not published, EU:T:2015:34, paragraph 18).
46 In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (judgment of 21 January 2015, GentleCare, T‑188/14, not published, EU:T:2015:34, paragraph 19).
47 A mark’s distinctiveness must be assessed by reference to (i) the goods or services for which registration of the sign is sought and (ii) the perception of the target public, which comprises consumers of those goods or services (see judgment of 27 November 2003, Quick v OHIM (Quick), T‑348/02, EU:T:2003:318, paragraph 29 and the case-law cited).
48 It is necessary to examine, in the light of those principles and the assessment set out by the Board of Appeal in the contested decision, the applicant’s arguments alleging infringement of Article 7(1)(c) of Regulation No 207/2009.
49 The applicant submits that the contested mark is made up of two word elements, ‘tsa’ and ‘lock’. As stated in paragraph 34 above, the contested mark contains the word ‘lock’ and that word can be regarded as descriptive of some goods and services for which this trade mark is registered.
50 It must be borne in mind, however, that the issue for the purposes of Article 7(1)(c) of Regulation No 207/2009 of the descriptiveness of a mark consisting of several words, such as that which is the subject of the dispute, may be assessed, in part, in relation to each of the terms of which it consists, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see order of 6 February 2009, MPDV Mikrolab v OHIM, C‑17/08 P, not published, EU:C:2009:64, paragraph 38 and the case-law cited) and to establish whether, in the mind of the public of the Union and taking account of the meaning of the sign, considered as a whole, there is a sufficiently direct and specific link between that sign and the goods and services for which registration is sought (see judgment of 23 September 2015, ReedExhibitions v OHIM (INFOSECURITY), T‑633/13, not published, EU:T:2015:674, paragraph 28 and case-law cited). In that regard, it has already been stated, in paragraph 39 above, that the Board of Appeal rightly found that the applicant had failed to demonstrate in the invalidity proceedings that the general public or the relevant specialist public understood ‘TSA’ as an abbreviation for the Transportation Security Administration or as a reference to that American agency.
51 However, the applicant also claims that some luggage manufacturers use the expression ‘tsa lock’ to describe a feature of their goods, namely that they are equipped with a special lock matching the closing mechanism of the American agency and that they are approved by that agency. To support that statement, the applicant points to items of evidence 28 and 38 which are attached to the observations of 8 April 2016 and are reproduced in Annex A.15, and to items of evidence 1 to 7 which are attached to the observations of 13 May 2015 and are reproduced in Annex A.10. As has been already held in paragraph 26 above, items of evidence 1 to 7 and item of evidence 28 may not be taken into account to prove the descriptive nature of the contested mark at the time of the application for registration. Furthermore, item of evidence 38 comprises extracts from the website of the applicant dating from 2005 and 2006. Only one of those extracts belongs to the relevant period as it is dated July 2005, without any further clarification as to the exact date. In any event, the use by the applicant on its own website of the expressions ‘tsa luggage locks’ and ‘tsa patented locks’ does not allow the descriptive nature of the contested mark to be demonstrated unless the public understands the abbreviation TSA.
52 Moreover, it should be considered, in particular with regard to item of evidence 25 attached to the observations of 8 April 2006, that the Appeal Board was correct in finding in paragraph 25 of the contested decision that the discussion threads did not conclusively indicate where the contributors are from. Accordingly, only one of those discussion threads both pre-dates the relevant date and is written by an author identified as present in the Union. The use of the expression ‘tsa lock’ in that item of evidence is not sufficient to make a generalisation as to the understanding of that expression by a significant part of the relevant public.
53 The applicant states that ‘both the TSA itself and the special TSA locks are known worldwide’ and that this fact is confirmed by several decisions of other trade mark offices, for example the Chinese Trademark Office or the United States Patent and Trademark Office, reproduced in the Annex. However, items of evidence 36, 37 and 42 attached to the observations of 8 April 2006 may not be taken into account to demonstrate the descriptive nature of the contested mark at the time of the application for registration, as was pointed out in paragraph 26 above, in part because of their dates but also because they give no indication as to the relevant public of the Union.
54 The applicant also claims that the Board of Appeal erred in holding in paragraph 27 of the contested decision that the words ‘TSA-approved’, and ‘TSA recognised’ which are used in the evidence it produced, do not have the same descriptive content as the contested mark and are perceived as abbreviated forms of ‘lock approved by the TSA’ or ‘lock recognised by the TSA’. Since it has not been shown, as already noted in paragraph 39 above, that the abbreviation TSA evokes, in the minds of the relevant public, the Transportation Security Administration, it must be found, as the Board of Appeal did, that that evidence is insufficient to allow a finding as to the descriptive nature of the contested mark.
55 Finally, the applicant complains that the Board of Appeal failed to take account of the bulk of the evidence in finding that the contested mark is in conformity with Article 7(1) of Regulation No 207/2009. Given that the contested decision contained a sufficient statement of reasons, as is apparent from the foregoing considerations, the Board of Appeal was not required to give express reasons for its findings in relation to the probative force of each item of evidence (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 127).
56 The Board of Appeal therefore did not err in finding that the applicant had failed to demonstrate in the invalidity proceedings that the contested mark should have been held to be descriptive of the goods and services for which registration was sought, on the date of the filing of the application for registration.
57 The appellant’s second plea must therefore be rejected as unfounded.
The third plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof
58 The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was deceptive for the purposes of Article 7(1)(g) of Regulation No 207/2009. Only the group of capital letters ‘TSA’ could indicate the origin of the mark as the element ‘lock’ is purely descriptive of the goods at issue and ‘TSA’ is understood as an abbreviation of Transportation Security Administration. The applicant also claims that, if the intervener alone was allowed to employ the expression ‘tsa lock’, this would lead the relevant public to believe that locks sold under the contested mark were supplied by the Unites States or at least were under their control.
59 EUIPO and the intervener dispute the applicant’s arguments and claim, in essence, that the contested mark cannot be misleading since it has not been proven that ‘tsa lock’ will be understood in the relevant territory as a reference to the American Transportation Security Administration.
60 Under Article 7(1)(g) of Regulation No 207/2009, registration is to be refused for trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
61 It is clear from consistent case-law that the circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation, presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see, to that effect and by way of analogy, judgment of 5 May 2011, SIMS — École de ski internationale v OHIM — SNMSF(esf école du ski français), T‑41/10, not published, EU:T:2011:200, paragraphs 49 and the case-law cited).
62 It must be borne in mind, in this respect, that the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (judgment of 30 March 2006, Emanuel, C‑259/04, EU:C:2006:215, paragraph 38). A mark does not fulfil that role of providing a guarantee if the information which it contains is of such a nature as to deceive the public (judgment of 5 May 2011, esf école du ski français, T‑41/10, EU:T:2011:200, paragraph 50).
63 Consequently, the assessment of the absolute ground for refusal of registration mentioned in Article 7(1)(g) of Regulation No 207/2009 cannot extend to anything other than the goods and services in question, on the one hand, and the perception of the mark by the relevant public, on the other (judgment of 5 May 2011, esf école du ski français, T‑41/10, not published, EU:T:2011:200, paragraph 51).
64 In this respect, it should also be recalled that, for the reasons set out in paragraph 39 above, it must be held that the applicant has not established that the relevant public associated, at the relevant time, the capital letters ‘TSA’ in the contested mark 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.
65 Thus, it must be held that the Board of Appeal did not err by finding that the applicant had failed to establish in the invalidity proceedings that actual deceit or a sufficiently serious likelihood of deceit could not be found to exist with regard to the contested mark at the date of the filing of the application for that trade mark.
66 Consequently, the third plea must be dismissed as unfounded and, therefore, the action must be dismissed in its entirety.
Costs
67 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Safe Skies LLC to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 22 March 2018.
E. Coulon | | S. Frimodt Nielsen |