After much deliberation, the UKIPO has finally delivered its decision on the opposition of Transport for London’s UK trade mark application for word mark ‘MIND THE GAP’. The application was opposed by clothing retail company GAP Inc on the grounds of bad faith, similarity to an earlier trade mark “GAP” which was likely to cause confusion, and passing off and/or an earlier right by virtue of the law. Transport for London (TfL) applied for the word mark in September 2021 in class 9 for eyewear and helmets, and class 18 for items such as leather goods, bags, umbrellas, etc.
GAP’s opposition was partially based on a confidential agreement it entered into with the Transport for London (TfL) in 2004. It alleged the application, and use of the mark if registered, would breach the agreement as it prevented TfL from registering ‘MIND THE GAP’ in relation to clothes accessories. However, TfL disagreed and argued that the goods applied constituted eyewear, bags, and luggage, rather than clothing accessories.
In respect of the grounds regarding the similarity to an earlier mark and passing off, GAP relied on its goodwill within the name for clothing, footwear, and headgear. This was also disputed by TfL on the basis that, together, all three words ‘MIND THE GAP’ is the well-known warning phrase for passengers using the London Underground system and therefore did not constitute similarity with “GAP”.
In its decision the UKIPO disagreed that TfL’s goods were similar to those registered for “GAP” on the basis that most of TfL’s goods hold a different purpose. On confusion, it asked whether any confusion would arise because of the similarity between the mark and sign, with disregard to any stylisation, and upon consideration it agreed with TfL’s argument that “GAP” is one of the three words in its mark and thus held the extent of similarity to be low-to-medium. It is because of the three words in TfL’s mark that the UKIPO found it very unlikely for the average consumer to be confused as they would not dissect the phrase and associate it with the GAP fashion brand, and if any link was to be found between the marks it would be too weak.
However, the bad faith aspect steered the decision in a different direction as the UKIPO examined it in light of the Supreme Court’s recent decision in Sky v SkyKick, which we previously reported on in November last year. Overall, the UKIPO held that the “MIND THE GAP” application was made in bad faith in relation to goods in class 18 such as purses and wallets because the agreement clearly prevented this. Therefore, the bad faith ground applied in respect of the aforementioned goods and the remaining goods could proceed to registration.
This decision highlights the importance of having regard to terms contained in any coexistence and/or settlement agreements regarding trade marks and future registrations as they will be taken into account when considering claims of bad faith.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
