Appeal allowed by High Court based on GAP’s unused mark…

The Judge found in a recent High Court Appeal from a decision of the UK Intellectual Property Office (UKIPO), that the sign “The GapTravel Guide” was confusingly similar to the earlier trade mark GAP.

The British American Group Ltd sought to register “The GapTravel Guide” for “magazine publishing” in Class 41, at the UKIPO. Gap (ITM) Inc, the well-known clothing retailer opposed registration based on its’ earlier EU registration for GAP which included protection in Class 41 for publication of electronic books and journals online, writing of texts and publication of books. The GAP registration relied upon, had been on the Register less than five years. Consequently, Gap (ITM) Inc., was not required to demonstrate that it had used the mark on its’ services in Class 41.

The opposition filed by Gap (ITM) Inc. was dismissed at the UKIPO.

Gap (ITM) Inc., appealed the decision to the High Court, on one relative ground for refusal, namely that due to the similarity of the marks and services applied for, there was a likelihood of confusion on the part of the public.

The High Court Judge considered that the correct approach in the circumstances, was to compare a notional and fair use of the mark The GapTravel Guide, with a notional and fair use of the earlier GAP mark, both uses being in relation to the full range of goods and services under the respective marks.

One question which the High Court Judge addressed during the Appeal was whether the UKIPO Hearing Officer had identified the correct average consumer. The UKIPO Hearing Officer took the average consumer as being generally businesses who require the publication of material.  The Judge agreed with the Appellant that the average consumer was the general public: “a conclusion that a consumer of a product of such a service is not also a consumer of the service is too narrow a perspective and does not accord with practical commerce”.

A further point considered on Appeal, was the UKIPO Hearing Officer’s finding that the word GAP in “The GapTravel Guide” was an allusive indication to a “gap year” guide. The Appellant argued that this was incorrect as no account had been taken of the circumstances and understanding of a significant proportion of the relevant public who were unfamiliar with “gap years”. The High Court Judge agreed that the Hearing Officer’s finding lacked reasoning.

Looking at matters afresh, the High Court Judge considered how the mark The GapTravel Guide may be used orally. He reasoned that if someone said “the gaptravel guide publishing services are the ones to go for (or, are rubbish)” there was a real risk that a significant proportion of the public, with the  perceptions and expectations of the average consumer would think that the services of the Appellant were being referred to. Furthermore, the Judge held that it was not sufficient that the merging of the two words GapTravel in the mark applied would serve to remove the likelihood of confusion.

The Judge allowed the Appeal.

This High Court decision accentuates the value of opposing a later mark based on a relatively young trade mark registration. It will be noted that although Gap (ITM) Inc had no use of its’ mark relied upon in the relevant class,  it was able to maximise a broad interpretation of the notional use to which the mark could be put, and to build a case around that notional use. A younger registered mark covering a wide spectrum of classes can serve as a much greater threat to a later filed application for registration.

If you wish to discuss any of the issues raised above, please contact Philippa Frayne – Senior Trade Mark Attorney, or any member of the Edwin Coe Intellectual Property team.

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