05/02/2025
The UKIPO recently issued a decision (Case O/1219/24 decision of Allan James) in an opposition brought by fashion brand Gap (ITM) Inc. (‘Gap’) against Transport For London (‘TfL’). The opposition was filed against TfL’s UK Trade Mark Application Number UK00003694283 for the word mark MIND THE GAP covering goods in Class 9 (various eyewear products and helmets) and Class 18 (various bags, wallets, purses and cases).
The opposition against the MIND THE GAP application was brought on the following grounds:
- A likelihood of confusion with Gap’s earlier trade mark registrations for GAP;
- The use and registration of MIND THE GAP would take unfair advantage of or be detrimental to the reputation enjoyed by Gap’s earlier trade mark registrations for GAP in the UK;
- The use and registration of MIND THE GAP would amount to passing off of Gap’s unregistered rights in GAP in the UK;
- The use and registration of MIND THE GAP would be prevented by virtue of an earlier right other than an unregistered trade mark or other sign used in the course of trade; and
- The MIND THE GAP application was filed in bad faith.
The first three grounds of opposition
The case involved a good deal of evidence relating to each party’s use of its mark. On TfL’s part, it submitted that it had used the slogan MIND THE GAP as a warning phrase on the London Underground since 1968 (one year before Gap was founded). TfL states that “‘Mind the gap’ is the most famous recorded announcement on the London Underground network” and that “as a result of TfL’s extensive use of the MIND THE GAP slogan for over 50 years, TfL considers this slogan to be synonymous with the London Underground system, as well as its operations and activities, and is an important part of its corporate identity.” TfL also submitted in evidence that the phrase often appears on station platforms and that, as a result of its successful licensing business, MIND THE GAP has been featured on a range of merchandise including gifts and souvenirs, and T-shirts featuring MIND THE GAP in the London Underground roundel have been sold in the London Transport Museum Shop from at least 1975. TfL argued that the presence of its MIND THE GAP slogan and its reputation in the UK predates Gap’s presence in the UK, which TfL understands began in 1987.
Gap relied on its earlier trade mark registrations for GAP and also unregistered rights in GAP in the UK. For the first three grounds of opposition respectively, Gap had to prove that its earlier registrations in Classes 18 and 25 were put to genuine use in the UK, that the earlier registration(s) enjoyed a reputation in the UK and that its unregistered mark GAP enjoyed goodwill in the UK. On the evidence, the Hearing Office was satisfied that Gap proved genuine use in relation to backpacks, beach bags, handbags, shopping bags and tote bags in Class 18, and did not find it necessary to establish whether there had been genuine use in relation to other goods in Classes 9 and 18. Gap was also relying on registrations in Class 25, which TfL accepted had been used in relation to clothing, headgear, and footwear. The Hearing Officer also found that Gap’s registered GAP marks enjoyed enhanced distinctive character and a strong reputation in the UK for clothing, footwear and headgear and that Gap had goodwill in its unregistered GAP mark in the UK for clothing.
However, all of the first three grounds of opposition failed.
In the likelihood of confusion assessment, the Hearing Officer found that the average consumer normally perceives a trade mark as a whole, particularly “where the consumer understands a combination of words to form a warning.” It was held that the distinctive character of MIND THE GAP was in the combination of the words, inherently and also because the combination had significance of a warning for at least users of the London Underground network because of TfL’s decades of use. This lead the Hearing Officer to find that there was no likelihood of direct confusion:
“It is important to note this is not about the applicant’s prior use of the contested mark as a trade mark. Rather, it goes to the conceptual meaning of the mark to average consumers. The fact that the three words at issue in this case form a composite term with a strong, specific, conceptual meaning to, at the very least, a significant proportion of the UK public is relevant because it reduces (in my view, to zero) the risk of that section of the public mistaking the contested mark for another trade mark comprised of just one those three words.”
It was also held that there was no likelihood of direct confusion because it is very unlikely that the average consumer will break down the mark MIND THE GAP into the elements MIND THE and GAP and attribute more significant weight to the latter part, such that consumers will think that there is a common source for the goods.
Despite the “strong” reputation of the GAP mark in the UK in relation to clothing, footwear and headgear, the opposition also failed on the reputation-based grounds. It was held that no significant proportion of UK consumers would make a link between the MIND THE GAP mark used for goods in Classes 9 and 18 and the mark GAP with its reputation in clothing, footwear and headgear in Class 25. Or even if there was a link, it would be so weak that no unfair advantage or detriment would occur. To be successful in a passing off allegation, it is necessary to show that use of the mark complained of would cause a misrepresentation. Relying on the reasons for dismissing the opposition on the likelihood of confusion grounds, the Hearing Officer found that “no substantial number of persons will be deceived by the applicant’s [TfL’s] use of the contested mark [MIND THE GAP]. Indeed, I doubt that anyone will be deceived.” The passing off case therefore failed.
The fourth and fifth grounds of opposition
The fourth and fifth grounds of opposition – based on earlier rights other than unregistered trade marks or signs and the bad faith allegation – rely on a confidential settlement agreement between the parties in 2004. Gap alleges this 2004 agreement was breached by the MIND THE GAP application and would be further breached if MIND THE GAP were used in relation to the goods applied for. Aspects of the decision relating to the 2004 agreement are redacted from public view, but it is common ground that, if the 2004 agreement applies, it precludes TfL from registering the words MIND THE GAP alone in relation to ‘clothing accessories’.
There was a question as to whether the contractual rights relied on by Gap constitute an ‘earlier right’ for the purposes of section 5(4)(b) of the Trade Marks Act, which reads:
“….an earlier right other than those referred to [elsewhere in section 5 of the Act – i.e. trade marks, unregistered trade marks or signs, geographical indications, designations of origin] in particular by virtue of the law of copyright, or the law relating to industrial property rights.”
The argument advanced by Gap is not a common one. Gap relied on the fact that the “in particular” wording of the statute leaves open the categories of earlier right that could be relied upon, but the Hearing Officer noted that Gap did not produce a single UK (or EU) case where the statue wording had been taken to include contractual rights, in 30 years of the law’s existence.
Interpreting the EU Directive from which the UK statute derives, the Hearing Officer held that the section of the Trade Marks Act relied upon concerns earlier legal rights “other than” trade mark rights. The 2004 agreement concerned settlement of a trade mark dispute, the subject matter of the agreement was trade marks and the agreement did not create rights protecting any other kind of sign. The ultimate finding was that the 2004 agreement does not create any rights which constitute an earlier right protecting signs “other than” earlier trade marks. This ground of opposition was therefore dismissed.
Finally, the Hearing Officer assessed the pleading that TfL’s application had been filed in bad faith because it was contrary to the 2004 agreement. The Hearing Officer stated the following, with reference to paragraph 158 of the recent judgment of the Supreme Court in Sky v Skykick:
“There can be no doubt that making an application 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.”
TfL argued that it believed the 2004 agreement was not in force at the relevant date and also that Gap had not complained about various merchandise goods that TfL had offered for sale post-2004 bearing the mark MIND THE GAP. Neither of these points appear to have gained any ground with the Hearing Officer. Moreover, the Hearing Officer noted that TfL had not adduced any evidence of MIND THE GAP alone in use in relation to merchandise, including purses, wallets, and travel card holders after the 2004 agreement or at all, and so an absence of complaints about these goods carried no weight.
The Hearing Officer found that the application for MIND THE GAP alone had been filed in bad faith in relation to the following goods in Class 18:
Purses and wallets, including purses for travel cards and passes, purses for payment cards; wallets for travel cards and passes, and wallets for payment cards; card cases and holders for cards and passes.
All other goods of the application could proceed to registration.
The appeal deadline for this case was running until recently and so we wait with interest to see whether an appeal has been lodged.
There is also an outstanding question of costs. Gap contends that it should be awarded off-scale costs for TfL’s persistence in its request that Gap prove use and reputation for the mark GAP for clothing, even after the Hearing Officer, via a letter from a case worker, asked TfL to consider whether its requests were justified (Gap argued that its use and reputation in relation to clothing was common knowledge). The issue of costs is to be argued and decided separately and could be an interesting decision exploring when costs may be awarded off the UKIPO’s standard scale.
Take-home considerations
In this case, the conceptual meaning attached to the phrase MIND THE GAP lead to a finding that the mark would not be dissected and would not be confused or linked to the mark GAP. This case reaffirmed that the existing meaning of a mark applied for can be relevant in assessing conceptual differences between trade marks. The case also raised an interesting question of whether contractual rights can form the basis of an opposition in the UK. Whilst the statute’s definition of other earlier rights is not exhaustive, it is clear that the contractual rights must confer rights other than those relating to earlier trade marks (or other rights already mentioned in the section 5 of the Trade Mark Act).
Bad faith is a hot topic in UK trade mark law and there is now a catalogue of cases setting out the hallmarks of bad faith. This existing case law supports the position, as it did in this case, that filing a trade mark which the applicant knows, or has reason to know, is in breach of an agreement is contrary to honest business practices and will constitute bad faith. This could involve a nuanced assessment. It is not impossible to envisage a situation where parties have an honest dispute on the scope of an agreement. But this case makes clear that agreements which restrict future trade mark applications may be placed under close scrutiny through the lens of a bad faith challenge.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
