UKIPO tells TfL to mind GAP in partial trade mark refusal for bad faith

In a recent decision (O/1219/24) regarding an attempt by Transport for London (TfL) to register the slogan MIND THE GAP as a UK trade mark (UKTM), the UK Intellectual Property Office (the UKIPO) issued a partial refusal of TfL's application on the grounds of bad faith, based on contractual terms in a prior agreement between TfL and the clothes retailer GAP (ITM) Inc. (GAP).  

Background

In September 2021, TfL, the government body responsible for most of the transport network in London, filed an application (the Application) to register the word mark MIND THE GAP (the Mark) as a UKTM for goods and services in class 9 (eyewear and helmets) and class 18 (leather goods, bags, umbrellas, etc). 

The Application was opposed by GAP, the owner of the eponymous fashion retail brand GAP, on the basis of the full gamut of grounds, namely that the: 

1. Application was made in bad faith (section 3(6) of the Trade Marks Act 1994 (TMA)); 
2. Mark is similar to an earlier trade mark and applied for in respect of identical/similar goods and services, and there is a likelihood of confusion (section 5(2) TMA); 
3. Mark is identical or similar to an earlier trade mark which has a reputation and would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark (section 5(3) TMA); and
4. use of the Mark is liable to be prevented by virtue of the law of passing off (section 5(4)(a) TMA) or an earlier right pursuant to section 5(4)(b) TMA).

For its opposition grounds based on sections 3(6) and 5(4)(b) TMA, GAP relied on a confidential settlement agreement (the Agreement) entered into between TfL and GAP in 2004, which GAP alleged would be breached both by the filing of the Application and the use of the Mark. 

It was common ground between the parties that the Agreement precluded TfL from registering the words MIND THE GAP alone in relation to "clothing accessories", but it is was disputed by TfL that this applied to the goods and services covered by the Application, which it characterised as "eyewear and bags and luggage". 

In respect of sections 5(2), 5(3) and 5(4)(a) TMA, GAP relied upon various registered UKTMs for the word mark GAP in classes 9 and 18, and the goodwill connected to the name or mark "GAP" when used for clothing footwear, and headgear. 

TfL, on the other hand, contended that the Mark is a warning statement and slogan, which had become synonymous with the London Underground system, and which resisted dissection into its constituent words. It therefore denied any similarity to GAP's earlier marks, as well as any passing off. 

The UKIPO's ruling

Similarity of goods/services and marks 

Having first disposed of TfL's attempts to put GAP to prove genuine use of its earlier marks, the UKIPO turned to GAP's arguments under section 5(2) TMA.

Dealing first with the issue of similarity, the UKIPO found that the bag-related goods in the Applications were self-evidently identical to those protected by GAP's prior registrations in class 18. GAP had also sought to argue that it had acquired a reputation in relation to class 25 goods, and asked that the UKIPO assess the similarity between such goods and those in the Application's class 9 and class 18 specifications accordingly (based on Canon, Hesse v OHIM and Boston Scientific v OHIM). 

The UKIPO, however, disagreed with GAP's arguments of "high similarity", finding that: 

• Headgear in class 25 (e.g. hats) generally has a different purpose to protective headgear (e.g. helmets) and is typically made of different materials, so to the extent that they are similar goods, the similarity is low; 
• Under the NICE classification, belts for clothing, including leather belts, are in class 25 not class 18, whereas shoulder belts in class 18 are for carrying purposes; 
• Belts for bags may be similar in nature to belts for use as clothing, but again the purpose is different; so any similarity is low; 
• Wallets and purses are similar to clothing and money belts to a medium degree, as they may be complementary or competitive; and
• Hats in class 25 are not similar to hat boxes in class 18, as they are neither complementary nor competitive goods. 

As for similarity between the parties' marks, GAP had argued that there was visual similarity to at least an average degree, because the word "GAP" is the focus of the Mark, and the Mark is capable of normal and fair representations which draw particular attention to the "GAP" element. 

The UKIPO rejected this argument, applying Herno v Miss Sparrow, in which it was held that such an approach would be contrary to the statutory test, which is to ask whether confusion will arise "because of the similarity between mark and sign"; stylisation is not part of the mark. The UKIPO therefore agreed with TfL that the word GAP is but one of the three words making up the Mark, and therefore there was only a low-to-medium degree of visual and aural similarity between the Mark and GAP's earlier marks. 

Further, the concept of GAP's earlier marks would appear dissimilar to average consumers of clothing and bags, as it does not denote any warning meaning. 

MIND THE KAT

Likelihood of confusion 

GAP had claimed that there was a likelihood of both direct and indirect confusion, with the former being exacerbated by the enhanced distinctive character of its earlier marks. 

The UKIPO accepted that GAP is the subject of the preceding words MIND THE.., but this did not mean that GAP is the dominant and distinctive element of the Mark, as the average consumer normally perceives a trade mark as a whole, particularly where the combination of words is understood to form a warning (i.e. have a distinct meaning). In this case, the term used in the Mark has taken on a specific warning significance to, at least, users of the London Underground system, where it has been used as a warning since the 1960s. 

In the UKIPO's view, the fact that the three words used in the Mark formed a composite term with a "strong, specific, conceptual meaning to, at the very least, a significant proportion of the UK public" was relevant because it reduced (to zero, in the UKIPO's view) the risk of that section of the public mistaking the Mark for another trade mark comprised of just one those three words.  There is therefore no likelihood of direct confusion. 

As for indirect confusion, this argument was also rejected by the UKIPO, finding it very unlikely that average consumers would dissect MIND THE GAP into MIND THE and GAP, and disregard or downgrade the distinctive significance of MIND THE in the composite term. Further, there was no evidence that consumers would have had in mind any of GAP's historical uses of the slogans "fall into the Gap" or "meet me in the Gap". 

Passing off 

Moving to passing off, the UKIPO again found that GAP's case failed, because use of the Mark in relation to the goods covered by the Application would not constitute a misrepresentation to the public that those goods are connected with the applicant, for the same reasons that there was no likelihood of confusion.      

Section 5(3) TMA 

In respect of the section 5(3) TMA ground, the UKIPO accepted that GAP has a reputation in the UK in relation to clothing, footwear, and headgear, and that the mark "GAP" is highly distinctive through extensive use in relation to such goods. 

However, considering again the UKIPO's findings in respect of likelihood of confusion, it also found that no significant proportion of UK consumers will make a link between the Mark, as used on goods in classes 9 and 18, and the mark "GAP" as used on goods in class 25. Even if they did make such a link, it would be so weak so as to be inoperative. 

The Agreement 

GAP had sought to allege that its contractual rights under the Agreement constituted earlier rights for the purposes of section 5(4)(b) TMA.  However, it was unable to identify any cases at UK or EU level where contractual rights had been asserted as earlier rights under this provision, let alone successfully relied upon. 

The UKIPO found that, in fact, the subject matter of the Agreement is the trade mark rights owned by the parties; it did not create rights protecting any other kind of sign. Further, and in any event, section 5(4)(b) of the Act does not protect private contractual rights relating to trade marks. 

Bad faith

Turning, finally, to GAP's bad faith claim under section 3(6) TMA, the UKIPO observed (following the UK Supreme Court's recent ruling in Sky v Skykick) that making an application which the applicant knows, or has reason to know, is in breach of an agreement with a third party is inconsistent with honest practices and potentially renders the application subject to refusal or invalidation on grounds of bad faith. 

The UKIPO went through a lengthy analysis of various provisions of the Agreement, much of which was redacted from the decision due to confidentiality, and found that the Application to register the words MIND THE GAP alone was, in fact, made in bad faith in relation to purses and wallets (and goods encompassed within this broad category).

This was because (amongst other factors), TfL had no reasonable grounds to believe (as it alleged) that the Agreement had been terminated (as it continued to observe its terms after its purported termination), not did it have any reasonable grounds to believe that the Agreement no longer covered the UK because of Brexit. Even if so, its attempt to exploit this technical exclusion in order to get out of terms which it had willingly accepted at an earlier date, meant it was clearly acting against the spirit and purpose of the agreement, if not the letter. 

Therefore TfL was not permitted, under the terms of the Agreement, to register the words MIND THE GAP alone in relation to "clothing accessories" as at the time of the Application. Having found a medium-degree of similarity between class 25 goods and purses and wallets, the bad faith ground applied. The remaining goods covered by the Application could proceed to registration. 

Comment

This case will be of interest to trade mark practitioners in the UK given the recent renewal of interest in bad faith oppositions/cancellations following the Supreme Court's much-debated decision in Sky v Skykick. Clearly applicants seeking to register trade marks in the UK will need to pay closer attention (and, probably, take a fairly conservative approach) to the terms of any coexistence or settlement agreements which may relate to the mark applied for. Even though these terms will not be enforceable through trade mark law per se, they will be a relevant factor in any bad faith assessment.