Gap keeps its distance
George Mattey discovers why limitations have their limits for trade mark protection.  EWHC 1161 (Ch), Gap (ITM) Inc v Gap 360 Ltd, High Court, 10th May 2019.
 EWHC 1161 (Ch), Gap (ITM) Inc v Gap 360 Ltd, High Court, 10th May 2019
On 11th April 2019, the High Court decided on an appeal and a cross-appeal from a decision of the UK IPO in an opposition by GAP (ITM) INC (the Opponent) against an application by GAP 360 LTD (the Applicant).
The Opponent is the renowned worldwide clothing and accessories retailer, originating from and headquartered in San Francisco. It opened its first store in the UK in 1987 and had 140 stores there at the time of filing its evidence, with additional stores in Europe and beyond. Meanwhile, the Applicant was incorporated in May 2011, with the purpose of providing gap-year opportunities to younger generations.
On 5th March 2013, the Applicant applied to register a UK trade mark for GAP 360 with respect to various services in classes 35, 36, 39 and 41 (the Application). Subsequently, the Opponent opposed the application on several grounds, including s5(2)(b) of the Trade Marks Act 1994 on the basis that the Application was similar to a number of the Opponent’s earlier trade marks and was to be registered for services that are both similar and identical to those for which the earlier trade marks are protected. In doing so, the Opponent relied upon a number of earlier EU trade mark registrations for GAP, covering services in classes 35, 36, 39 and 41 (the Earlier Marks).
Crucially, during proceedings, the Hearing Officer (HO) allowed the Applicant to amend the description of services in classes 36 and 41, with the addition of the limitation “all relating to gap travel”. However, the Applicant did not request such a limitation to be made to the list of class 35 and 39 services. Subsequently, the opposition was held successful in relation to all class 35 and 39 services applied for, but unsuccessful in relation to all class 36 and 41 services applied for. Thus, the limitation, “all relating to gap travel”, had proven decisive in the HO’s findings.
According to the HO, there was a likelihood that consumers would be confused into believing that the applied-for services in classes 35 and 39, which did not feature the limitation, were those of the Opponent (or were in some way linked economically). However, in relation to the services in classes 36 and 41, he found that there was no such likelihood of confusion. His reasoning was that the element in common, GAP, in the context of services relating to “gap travel” had a low level of distinctiveness, such that the marks’ element in common (GAP) was outweighed by the presence of the additional 360 element in the applied for mark.
Subsequently, both sides appealed:
- the Opponent on the basis that the HO had erred in finding GAP to be non-distinctive or descriptive in relation to services relating to “gap travel”, and that the opposition should therefore also succeed in relation to classes 36 and 41; and
- the Applicant on the basis that the HO’s rationale should also result in the opposition failing in classes 35 and 39, given that the Application also sought registration for “advertising services relating to the travel industry” in class 35, as well as various transport and travel services in class 39.
In his judgment, Mr Justice Henry Carr held that:
- the HO had erred in concluding that the limitation precluded a likelihood of confusion in classes 36 and 41, while its absence in the other two classes gave rise to a likelihood of confusion;
- the limitation lacked precision and clarity pursuant to IP Translator, and therefore must be disregarded for the purposes of comparing the services at issue, as its inclusion would create considerable uncertainty in respect of the perceived scope of protection afforded to the registration;
- as set out in Postkantoor, a competent authority cannot be permitted to register a mark only in so far as the goods or services concerned “do not possess a particular characteristic”. The limitation, “all relating to gap travel”, falls foul of this because it purports to exclude other forms of travel services that do not relate to gap travel;
- although the HO was correct in finding that the terms “gap year”, “gap” (in the context of travel) and “gap travel” would be understood by a majority of consumers as relating to a break between finishing school and starting university, or between finishing university and starting work [para 15], he had erred by dismissing the fact that the remaining consumers, although a minority, still constituted a significant proportion of the relevant public and would have no uniform understanding of the word “gap” when used in the context of travel, nor of the expression “gap travel”;
- the fact that a significant proportion of average consumers would fail to understand GAP in this context meant that, for the purposes of comparing the signs, that term possesses at least an average level of distinctiveness and, consequently, the 360 element was not to be given more weight. Accordingly, the reproduction of the identical element GAP in the applied-for mark, as well as the high level of similarity and identity of services (irrespective of the limitation), meant that a likelihood of confusion existed on the part of the relevant public with respect to all the services applied for.
Thus, the Opposition succeeded in its entirety following appeal and the Applicant’s cross-appeal was dismissed.
No niche benefit.
Although the limitation adopted by the Applicant in classes 36 and 41, “all relating to gap travel”, was disregarded on the basis that it lacks sufficient clarity and precision, Carr J noted that the specifications of the Earlier Marks are of broad scope and encompass “gap travel”, and reiterated the HO’s finding that “even if the limitation ‘all relating to gap travel’ makes any difference, it cannot affect the identity of the services because the Opponent’s specifications are unlimited and therefore cover services relating to ‘gap travel’ too.”
This emphasises that particularisation of the descriptions of goods/services will do little to prevent a finding of identity between goods/services subject to comparison (eg in opposition and/or infringement proceedings) where the Earlier Mark is protected for a broader scope of goods or services, and the applied-for mark seeks protection for a subset (no matter how niche).
It also outlines the important considerations that need to be taken into account when adopting a limitation in a trade mark specification, especially when using a limitation as a strategy to avoid a dispute.
- Limitations, exclusions and such similar qualifications lacking clarity and precision may be ineffective
- Extensive particularisation of specifications may be of little use where the goods/services fall within a niche subset of a class heading
- An earlier rights-holder will need to show likelihood of confusion among a significant proportion of the relevant public, but not necessarily the majority of consumers
George Mattey is a Part-Qualified Trade Mark Attorney at Simmons & Simmons LLP
Part-Qualified Trade Mark Attorney, Simmons & Simmons LLP