Mind the settlement agreement: TfL achieves victory over Gap, but is held to have acted partially in bad faith

Claire Lehr and Eleanor Showering of our Intellectual Property team recently wrote an article in World Trademark Review, examining the UK Intellectual Property Office’s recent ruling on a trademark opposition brought by Gap (ITM) Inc against Transport for London.  The decision serves as a reminder of the importance of checking historic agreements before filing new trademark applications.

• Gap opposed TfL’s application for MIND THE GAP in Classes 9 and 18 based on earlier registrations for GAP in the same classes
• The UKIPO found no likelihood of confusion, no unfair advantage and no passing off
• However, based on a 2004 settlement agreement between the parties, the UKIPO found that TfL had sought to register certain goods in bad faith

The UK Intellectual Property Office (UKIPO) recently ruled on a trademark opposition brought by Gap (ITM) Inc (‘Gap’) against Transport for London (‘TfL’). Gap opposed TfL’s application to register MIND THE GAP for goods in Classes 9 and 18. Gap relied on various earlier trademark registrations for GAP in the same classes and based its opposition on the following four grounds:
likelihood of confusion, unfair advantage and reputational damage, passing off and bad faith.

The opposition failed on all grounds but one – bad faith, where Gap was partially successful. Gap’s partial success rested on a settlement agreement entered into by the parties in 2004.

Victory for TfL
TfL was close to achieving an overwhelming success. Not only did the UKIPO find no likelihood of confusion between the parties’ marks, even for overlapping goods, it also found that there was no unfair advantage due to the strong association of MIND THE GAP with London’s public transport system. It followed that there was no passing off. So how did TfL still end up losing several of its applied-for Class 18 goods from its trademark application?

The bad-faith claim

In 2004 TfL and Gap had resolved a dispute through a confidential settlement agreement….

You can read the full article here (subscription may be required).

This article first appeared on WTR Daily, part of World Trademark Review, in (January 2025). For further information, please go to www.worldtrademarkreview.com.