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.
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
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
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  EWHC 599
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