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...