The High Court has allowed an appeal against a decision of a UK IPO Hearing Officer dismissing an opposition to an application to register the trade mark The GapTravel Guide in relation to magazine publishing services in Class 41.
The earlier mark was an EUTM for the word mark GAP in respect of a range of services in Class 41, including publication of electronic books and journals online, writing of texts and publication of books.
While the GAP mark was well-known in the clothing field, the Opponent relied upon the assumed reputation of unused marks arising from notional and fair use across the specification for which the mark was registered.
Average consumer
One question which the High Court judge had to answer was whether the Hearing Officer had identified the correct "average consumer". The Hearing Officer had held that the average consumer of publishing services was generally businesses who required the publication of material. The Opponent argued that because the applicant was using the mark applied for on its magazines, the average consumer of those magazines is the general public. The judge agreed that the law of trade marks should take some cognisance of what traders actually think and do – in this case, magazine publishing by producing and distributing magazines. He said that there was a high degree of correspondence between the carrying out of that service and the magazines which are the end product of that service. He held that "a conclusion that a consumer of the 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." Therefore, the Hearing Officer was wrong to conclude that the average consumer would generally be a business.
Similarity between the marks
The Hearing Officer had also considered the similarity of the marks and had concluded that the marks shared a low level of visual similarity, a low level of aural similarity and no conceptual similarity. The Opponent submitted that errors had been made in respect of all three conclusions, especially as regards conceptual similarity.
It said there was no evidence to support the Hearing Officer's finding that the word GAP, as used in the GapTravel Guide, would be likely to be perceived by the average consumer as being an allusive indication to a "gap year" guide. Instead, it was argued the Hearing Officer had failed to take into account the circumstances and understanding of a significant proportion of the relevant public who were unfamiliar with the experience of gap years. Again, the judge agreed with the Opponent that there was an inconsistency in the reasoning of the Hearing Officer's decision.
As such, the judge decided that he could look at the matter afresh. He considered whether if an average consumer said "the gaptravel guides publishing services are the ones to go for (or, are rubbish)", that there would be a real risk that a significant proportion of the public would think that praise / criticism was being given to the travel guide publishing services of the opponent (i.e. under the GAP mark). The judge said that there did exist such a risk. The reason was that guides and travel guides are common subject matter for magazine publishing services and the presence of the neologism or portmanteau GapTravel was not sufficient to remove that likelihood of confusion.
Therefore, the judge held that the section 5(2)(b) objection succeeded and allowed the appeal.
Implications for brand owners
This decision demonstrates the importance of marks less than 5 years old when seeking to enforce a well-known mark.
Case [2016] EWHC 599
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