TFL almost 'MIND THE GAP' in opposition proceedings

Gap ITM Inc. ("Gap") is a US-based clothing and accessory retailer, with stores across the globe. Transport for London ("TfL") has used the infamous "MIND THE GAP" slogan for decades but has had an agreement with Gap since 2004 (the "2004 Agreement") regarding both parties' use of the mark.

The application in question, UK application number 3694283 for MIND THE GAP (the "Application"), covers contact lenses, spectacles, and other various eyewear and helmet goods in Class 9, as well as numerous leather and imitation leather goods including various bags, purses and wallets in Class 18. TfL's application was filed to replace an EU application pending at the end of the Brexit transition period.

Gap opposed the Application on the grounds of bad faith, likelihood of confusion, reputation, passing off and earlier rights given to it by the 2004 Agreement.

The decision

1. Proof of use

TfL put Gap to proof on its use of the marks it relied on (see below on the costs consequences of it having done this as persistently as it did).  The Hearing Officer ("HO") found that Gap had made sufficient use of the marks to satisfy the use conditions under s6A Trade Marks Act 1994 ("TMA"), which states that "the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met".  He therefore went on to consider the substantive grounds of opposition.

2. Likelihood of confusion – s5(2)(b) TMA

This ground of opposition was rejected.  It requires similar marks and identical or similar goods and services where there is a likelihood of confusion for the relevant public.

a. Similarity of goods and services

Gap's and TfL's Class 18 bag-related goods were identical, and there was therefore no need to consider the other class 18 goods.  Gap then argued that given its reputation in relation to class 25 goods ("clothing, footwear, headgear"), there was similarity with TfL's class 9 and 18 goods.  The HO disagreed:

• Helmets are dissimilar to headgear.  While some headgear may have the incidental quality of being protective, the purpose of helmets is protective. In addition, helmets are made of harder outer materials in contrast to headgear, and they merely have incidental effects of keeping the head warm and indicating fashion choices;
• Belts for clothing purposes (which sit in class 25) are dissimilar to "shoulder belts and shoulder straps" (which sit in class 18). Consumers may use and even coordinate both, but there is no direct complementary connection;
• Hat boxes are dissimilar to hats.  They have wholly different natures and purposes and are not complementary; and
• Wallets and purses have a medium level of similarity to clothing and money belts.

b. Similarity of marks

Visually and aurally, the marks were found similar to a low-medium degree. Conceptually, however, they were dissimilar. Consumers usually perceive marks as a whole and do not analyse its parts.  Gap contended that MIND THE GAP was "capable of normal and fair presentations that draw particular attention to the "GAP" element"; the HO disagreed, finding that such use would not constitute "normal and fair use of the contested mark".  Furthermore, GAP was not the dominant and distinctive element of the mark, and it was only one of the three words in TfL's mark.  MIND THE GAP is a warning, in the same vein as 'mind the step'; this meaning is not conveyed by the word GAP alone.  Finally, the HO looked at the distinctive character and fame of MIND THE GAP, not to assess its use by TfL as a trade mark, but to understand its conceptual meaning to average consumers. 

c. Direct and indirect confusion

Gap contended that there was both direct and indirect confusion, exacerbated by the enhanced distinctiveness of its marks. It was found, firstly, that there was no direct confusion. The composite term MIND THE GAP had a strong specific meaning to the vast majority of people in the UK; not only was it widely used in London and therefore recognised by most of those who either lived or visited the city, but also it was widely used in transport and other environments across the UK. Even if a consumer were not to understand the correlation between MIND THE GAP and TfL, the inherent warning nature of the term (combined with visual and aural dissimilarity) excluded any risk of direct confusion.

Secondly, there was no indirect confusion. To support this point, Gap had argued that it had a family of GAP marks, but it had not pleaded that.  In any event, the 'family of marks' argument was unconvincing; any 'family' consisted of GAP plus non-distinctive elements describing sub-categories of Gap clothing, e.g. 'baby'.   

Overall, the HO concluded that in the circumstances that there was no risk of the public "mistaking the contested mark for another trade mark comprised of just one those three words" and therefore no likelihood of confusion.  This ground of opposition failed.

3. Passing off – s5(4)(a) TMA

This opposition ground was dismissed with relative haste. It requires a misrepresentation as to trade origin that deceives the public, damaging the goodwill of another proprietor's mark.  Whilst Gap had goodwill at the relevant date, there had been no misrepresentation for the same reasons as the HO had found no likelihood of confusion, and therefore there could be no passing off.

4. Reputation – s5(3) TMA

This opposition ground was also rejected.  It requires the earlier mark to have a reputation in the UK, and for the use of the later mark to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

The HO accepted that the GAP mark had a reputation in relation to clothing, footwear and headgear. In determining whether the public would make the required 'link' between the marks, it was found:

• There was a low-to-medium degree of visual/aural similarity, and low conceptual similarity;
• Even where the goods were dissimilar, they were not entirely unrelated as some may be sold in the same store – especially having decided that the relevant public would pay a normal level of attention to these goods; and
• GAP had a strong reputation and was highly distinctive for clothing, footwear and headgear– but there was no likelihood of confusion (as above).

As such, the HO found that "no significant proportion of UK consumers will make a link (of any kind) between MIND THE GAP … and GAP", and no analysis of the types of damage under this head was merited.

Note that Gap had raised an EUIPO Opposition Division decision from 2014 which held that use of MIND THE GAP for the same goods as were in issue in these proceedings did fall foul of the EU equivalent of this provision.  The HO pointed out that not only was he not bound by that decision, he also found it unpersuasive.

5. Earlier rights – s5(4)(b) TMA

Little-used s5(4)(b) TMA states that a trade mark will not be registered if its use is prevented "by virtue of an earlier right other than those referred to … above [registered and unregistered trade marks] … in particular the law of copyright or […] industrial property rights". Gap claimed that the 2004 Agreement was such an earlier right.

The HO looked at Kerly, an academic text, which says it is 'arguable' that contractual rights fall into this section.  However, the subject matter of the agreement was the particular trade marks, and as it created rights only between Gap and TfL and not against third parties, the HO decided this was not the kind of right envisaged by the TMA or by the EU Trade Marks Directive which gave rise to it.  Why he came to this conclusion so definitively is unclear; a contractual right in respect of trade mark rights is not the same as trade mark rights themselves and therefore arguably is indeed such an earlier right.  In addition, the statute states that copyright and industrial rights prevent registration in particular – meaning the list is not exhaustive and could theoretically include contractual rights.

6. Bad faith – s3(6) TMA

There was disagreement here regarding which date should be used to assess bad faith.  The EU trade mark from which the Application derived had been filed in July 2018.  TfL considered that the 2004 Agreement had been terminated in 2019, and the Application had been filed as a standalone UK application in September 2021. TfL therefore contended that it had not breached the 2004 Agreement and acted in bad faith by making the Application, because it was the date of the UK application and not the EU application which should be taken into account for assessing bad faith, and as at that date, the 2004 Agreement was not binding on it.

The HO agreed.  At the end of the Brexit transition period, proprietors of an EU application were given until the end of September 2021 to make a UK application mirroring their EU application (referred to as a comparable mark/application).  It was the date on which they did so that was the relevant date for assessing bad faith, as it was then that the proprietor took an active decision to apply for the comparable mark.  The relevant date was September 2021.

As an aside, for oppositions to comparable applications which are based on relative grounds i.e. third party rights, it is the EU filing/priority date which counts, so as to ensure that any third party rights intervening between that date and the UK filing date do not prejudice the registrability of the EU-based UK application.  That gives effect to the Withdrawal Agreement, which was intended to ensure equivalent rights were granted so no protection was lost simply by virtue of Brexit. 

The HO then went on to consider whether or not the 2004 Agreement had indeed been terminated.  He advised that "If the parties wish to conclusively establish whether their agreement has been lawfully terminated, the proper course is to apply to the court for an appropriate declaration".  He did however express his view that the agreement had likely not been lawfully terminated, and so proceeded to analyse its terms; much of that analysis is redacted from the decision as it is confidential. 

The HO looked at the law around bad faith, and directly applied the clear analysis set out by the Supreme Court in the SkyKick decision (SnIPpets article here).  Bad faith in trade marks presupposes a dishonest state of mind in relation to the trade mark system, and "will be made out where the proprietor made the application for registration, not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties".  Furthermore, "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". 

The HO considered that TfL did not have reasonable grounds to believe that the agreement had terminated and as such, it knew or ought to have known that making the UK application was a breach of that agreement in respect of some of the class 18 goods applied for. These included purses and wallets, including purses for travel cards and passes, purses for payment cards, wallets for travel cards and passes, wallets for payment cards, card cases and holders for cards and passes.  To that extent the application had been made in bad faith, and the opposition succeeded for those goods, whilst the rest of the application was permitted.

Costs

Whilst most of Gap's grounds were rejected, the HO was initially minded to award Gap off-scale costs for TfL's persistent (and arguably unjustified) pursuit of proof of use evidence. Whilst TfL were entitled to request such evidence, the HO noted that it continued its requests even after correspondence from the UKIPO questioning whether such requests were really justified. However, due to time constraints and likely tempered by TfL successfully defending most opposition grounds, the issue of costs was deferred to a later hearing.

Comment

The decision involves a rarely-used ground of opposition – the "other earlier rights" ground. The conclusion that contractual agreements relating solely to the trade marks in dispute do not count as such other earlier rights is interesting and does not appear to be based on solid legal principles, so it will be interesting to see if this point is appealed. Note that in any event, it still remains arguable that agreements without this focus count.

Furthermore, considering TfL have a 1997 registration for MIND THE GAP in their stylised font which covers clothing in Class 25, it is unclear as to why they entered the 2004 Agreement (and no light was shed on this by the redacted decision). It also remains unclear why TfL did not cite this registration either in the current proceedings or in an opposition when Gap first sought trade mark protection.

With thanks to Ali Zaghloul, trainee solicitor, for co-authoring this article.