UK: GAP's Unused Trade Mark Advantageous In Opposing Third Party Application

The famous GAP brand has succeeded in opposing a third party's registration of "The GapTravel Guide", in the High Court of England and Wales.

The judgment, Gap (ITM) Inc v British American Group Limited [2016] EWHC 599 (Ch) (21 March 2016), of deputy judge John Baldwin QC, is available here.

Background

In January 2014, British American Group Ltd sought to register "The GapTravel Guide" as a UK trade mark in respect of the services of 'magazine publishing' in class 41. The application was opposed by Gap (ITM) Inc, which owns trade marks used in relation to GAP branded clothing stores, on numerous grounds. The UK IPO Hearing Officer dismissed Gap's opposition, but it appealed the Hearing Officer's decision to the High Court.

In the High Court, Gap's case was founded on an earlier GAP mark for a range of services including publishing, which had been registered for less than five years. As such the earlier mark benefitted from a broad interpretation of potential use, rather than being considered only in light of its actual use.

Gap's Appeal

Gap's appeal was based on section 5(2)(b) of the Trade Marks Act 1994, which provides that a trade mark shall not be registered if, because it is similar to an earlier trade mark and is to be registered for goods and services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public (which includes the likelihood of association with the earlier trade mark).

Gap's earlier trade mark was registered on 15 April 2013, in respect of a range of services in class 41 including:

"Publication of electronic books and journals online; Writing of texts [other than publicity texts]; Providing on-line electronic communications, not downloadable; and Publication of books".

Ordinarily an opponent's earlier mark will only be considered to the extent of the goods and services to which it has been used. However, as it was registered within five years prior to publication of British American Group's application "The GapTravel Guide", there was no requirement to show any use of the earlier mark (section 6A(1) of the 1994 Act). Nor did it matter that the GAP mark relied upon had not yet been used in respect of the services for which it was registered. The reasons for this were explained by Jacob LJ in Reed v Reed [2004] RPC 40 at [79] (an infringement case, but the principal is the same):

"the court must assume that the mark has been in use and developed with a reputation and goodwill for the specification of goods or services ... Were this not so, there could never be Art.5.1(b) infringement of an unused registered mark. That would defeat one of the key purposes of trade mark registration - the conferment of protection in advance of use... The way one arrives at this facet of Art.5.1(b) infringement is via the word "likely". This implicitly directs attention to the future - which includes the assumption that the mark owner will put his mark into use if he has not done so yet. The kind of use contemplated when a mark is unused or minimally used must be that of "notional and fair" use - no other makes sense".

The deputy judge therefore considered that the correct approach in this case was to compare a notional and fair use of the mark that was the subject of the application, with (since the earlier registered mark has not been used) a notional and fair use of the earlier mark, both uses being in relation to the full range of goods and services within their respective specifications.

The average consumer

When assessing whether a mark should be refused registration under Section 5(2)(b) of the 1994 Act, one needs to conduct a global assessment through the eyes of the average consumer of the goods or services of the mark that is the subject of the application.

The Hearing Officer identified the average consumer of 'magazine publishing' services to be businesses who require publication of material. He reasoned that members of the general public are less likely to be regular consumers of such services, and went on to say that the purchasing process is likely to be well considered and may involve a relatively expensive procurement. The effect of this is that the average consumer would be less likely to be confused than a purchaser of everyday low value goods, who may pay less attention, and so the Hearing Officer's decision on this assisted the applicant, British American Group.

However, in the High Court, the deputy judge disagreed. He considered that in the present case, there was a high degree of correspondence between the service of magazine publishing by producing and distributing magazines and the magazines which were the end product of the service. The Hearing Officer's conclusion that the consumer of the product of such a service was not also a consumer of the service was "too narrow a perspective and does not accord with practical commerce". The deputy judge considered that since magazines were an end product of the service of publication, and since magazines are commonly purchased by members of the public, the 'average consumer' included members of the public.

It is noteworthy that in The London Taxi Corporation v Frazer-Nash [2016] EWHC 52 (Ch), Arnold J reached the opposite conclusion. He accepted that there was authority for end users of goods being relevant consumers, but in that case, the end products were taxis (which were used, but not ordinarily purchased, by members of the public). As explained in our article, London Taxi Company's trade mark for the shape of the "black cab" is invalid and not infringed by Metrocab, Arnold J deemed the relevant consumer to be the average taxi driver, as a consumer of taxis, not members of the public.

Conceptual similarity

The Hearing Officer considered there to be an allusion to "gap year" travel in "The GapTravel Guide", which served to reduce the overall similarity between the marks in issue. However, the deputy judge took the view that a necessary corollary of the Hearing Officer's conclusion was that the allusion offered by the applicant's mark must also be offered by the opponent's mark. This was because a notional and fair use of the GAP mark would include use in relation to travel guide publishing - it might be used for example as "Gap Travel Guide".

The likelihood of confusion or the effect of portmanteau

Having found that the Hearing Officer had erred in relation to the fundamental matters of identification of the average consumer and conceptual similarity, the deputy judge was satisfied that he could look at the matter afresh.

The deputy judge considered how the mark applied for might be used orally, and 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 Gap (i.e. under the GAP mark relied upon) were being referred to.

In the context of guides and travel guides, which are common subject matter for magazine publishing services, the word Gap is the differentiating factor between those travel guides and those of some third party. The deputy judge held that the "neologism or portmanteau" (i.e. the merging of the two words into one) of GapTravel in the graphic representation of the mark applied for was not sufficient to remove the likelihood of confusion.

The decision highlights the value of opposing a mark based on a relatively young registration. Gap's opposition was not affected by its lack of any actual use of its mark, and it was able to take advantage of a broad interpretation of the notional use to which the mark could be put, crafted around the mark being applied for.

Practical implication for brand owners

Brand owners could increase their prospects of successfully opposing applications if they regularly file applications covering a broad specification of goods and services, even if such marks are not renewed in the future.

From the opposite perspective, companies looking to develop a new brand and register trade marks should be aware of the five year rule and how it affects the consideration of use of an earlier mark. A younger registered mark that is registered in a wide spectrum of classes can potentially be much more of a threat to a registration application than one that is over five years old.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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