GAP opposed the application on the basis of its prior “GAP” rights in classes 9, 18 and 25 asserting that the application contravened Sections 5(2)(b) (likelihood of confusion), 5(3) (unfair advantage/ detriment to reputation) and 5(4)(a) (passing off) of the Act. GAP further alleged section 3(6) (bad faith) and 5(4)(b) (other earlier rights) relying on a settlement agreement executed between the parties in 2004, which it alleged the application breached.

Confusion

The hearing officer rejected GAP’s confusion claim, holding that the respective marks were visually and phonetically similar to a low-medium degree, with limited conceptual similarity. “MIND THE GAP” would be understood as a warning which would not be conveyed by the word GAP alone. GAP’s assertions that the dominant and distinctive part of the marks was the term GAP also failed, as the hearing officer considered that it was 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” element in the composite term. Additionally, the strong association of the phrase “MIND THE GAP” with the London Underground, combined with the dissimilarity or low similarity of the goods, would not result in direct nor indirect confusion. Section 5(2) was dismissed.

Unfair advantage and reputation

GAP argued that use of the phrase “MIND THE GAP” by TfL would exploit the reputation of GAP’s brand, which is well-known for clothing and accessories in the UK. The hearing officer found no evidence that consumers would make a link between the two marks, particularly given the distinctive meaning of “MIND THE GAP” as a public safety warning and its long-standing use by TfL. Section 5(3) was also dismissed.

Passing off

GAP claimed goodwill in the “GAP” brand and alleged that TfL’s use of “MIND THE GAP” would mislead the public. The hearing officer rejected this claim and, referring to TfL’s historic use, found that misrepresentation nor confusion would likely arise on part of the average consumer. The section 5(4)(a) ground was rejected.

Bad faith

GAP argued that TfL’s application breached a 2004 settlement agreement between the parties, precluding TfL from registering “MIND THE GAP” for “clothing accessories”. The hearing officer held that the agreement was binding and TfL had acted in bad faith by filing an application covering goods explicitly forbidden by the agreement (for example, wallets, purses and cardholders).

Other earlier rights

GAP attempted to rely on the 2004 settlement agreement as “earlier rights”; however, the hearing officer held that private contractual agreements relating to trade marks do not constitute “earlier rights” under this provision, which applies to rights such as copyright or industrial property. GAP’s opposition under section 5(4)(b) failed.

Outcome

GAP was partially successful. The hearing officer found that TfL had acted in bad faith by applying to register “MIND THE GAP” for goods falling within the scope of the settlement agreement, resulting in the refusal of those goods. However, TfL was also partially successful in defending the application, since the opposition failed on all other grounds and the mark was allowed to progress in relation to the remaining class 9 and 18 goods listed. Off the scale costs have been requested by both parties and a supplementary decision addressing this will be issued in due course.

In short

This decision highlights the intricacies of IP disputes where historical agreements are in place. In its arguments, TfL claimed that due to Brexit the 2004 settlement agreement no longer applied to the UK and thus it could not be found to have acted in bad faith. The hearing officer held that such an inference based on ambiguous wording was against the spirit of the agreement, thus TfL was still bound and had acted in bad faith. Since the only ground GAP succeeded on was bad faith, this decision clearly emphasises the importance of respecting existing agreements.

It also shines a light on disputes between renowned brands and the difficulty owners can have in establishing confusion, unfair advantage and passing off where the applicant and opponent’s marks are equally well-known.

The opposition may have been avoided if the parties had engaged in open discussions about the scope of the agreement, its current suitability, and TfL’s proposed use of “MIND THE GAP” moving forward. Businesses subject to settlement agreements should therefore ensure that their trade mark strategies align with prior commitments to forestall costly disputes.

Case details at a glance

Jurisdiction: England & Wales
Decision level: UKIPO
Parties: Transport for London and GAP
Citation: O/1219/24
Date: 24 December 2024
Decision (PDF): dycip.com/ukipo-tfl-gap-o121924