15 May 2025
Do you consider “GAP” (the clothing brand) and “MIND THE GAP” (the warning on the London underground) to be confusingly similar?
The UKIPO had to consider this recently as Gap opposed Transport for London’s UK trade mark application (no. 03694283) for “MIND THE GAP” for goods such as contact lenses, glasses, suitcases, types of bags, purses and wallets.
Gap and TfL both considered that their confidential agreement from 2004 (if relevant) included that TfL would not apply for the wording of “MIND THE GAP” alone in relation to “clothing accessories”. However, TfL did not consider that the goods applied for were clothing accessories.
Gap relied on the following grounds when opposing TfL’s trade mark application:
- Likelihood of confusion – Gap argued “MIND THE GAP” was a similar mark to its “GAP” trade marks for similar goods/services and there would be a resulting likelihood of confusion. However, the UKIPO decided there was not a likelihood of confusion because the public would understand the phrase “MIND THE GAP” as a whole rather than seeing “GAP” as an independent word within it (particularly where they are likely to understand this phrase to be a warning).
- Reputation – Gap needed to show it had a reputation in the UK for “GAP” for clothing, footwear and headgear, that consumers would make a link with “GAP” and the “MIND THE GAP” application, and the application would harm the trade mark’s reputation or distinctive character. Gap was found to have a reputation in the UK. However, the UKIPO did not consider that a significant proportion of consumers would make a link between “MIND THE GAP” used for eyewear and bag related goods and “GAP” used for clothing goods.
- Passing off – Gap needed to show it had goodwill in the UK for “GAP”, that there would be a misrepresentation so the public would think the goods in the “MIND THE GAP” application were connected with Gap’s goods, and there could be resulting damage. The UKIPO found that Gap had substantial goodwill in relation to clothing, but there was not found to be a misrepresentation for the same reasons that there was not a likelihood of confusion. Therefore, there was no damage and no passing off.
- Bad faith – Gap relied on the confidential agreement as meaning that TfL’s “MIND THE GAP” application had been filed in bad faith. The UKIPO found that an application could be considered to have been filed in bad faith where there was reason to believe that such a filing could be in breach of an agreement. On the facts, the UKIPO did not accept TfL’s arguments that it had thought the agreement had been terminated in 2019 and that Brexit meant the agreement no longer covered the UK. Therefore, the application was found to have been applied for in bad faith but only for goods relating to purses, wallets, travel card and card cases/holders. The remaining goods could proceed to registration.
Key takeaways
- Any relevant co-existence and/or settlement agreements should be reviewed carefully before making any trade mark applications. Such agreements should also be double checked following Brexit.
- Try to register trade marks for your brand for the goods/services that you intend to use in the relevant territories before someone else tries to apply for the same or a similar mark. Trade marks can be easier to rely on than unregistered rights (e.g. you would have a trade mark certificate rather than having to prove the elements of unregistered rights) and registered rights generally last longer.
- Before applying for a trade mark, you can conduct searches to check for earlier trade marks that may be a problem.
- There are also watch services that can alert you if, for example, a third party applies for trade marks that are similar to your trade marks. You can then make a decision on filing an opposition.
- Regularly review your trade mark portfolio in case there are countries or goods/services which you are going to expand into that are not covered.
- Keep detailed records to help prove the subsistence and your ownership of your goodwill (passing off).
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