Transport for London (TfL) recently faced opposition from GAP (ITM) Inc (GAP). regarding its trade mark application for the phrase “MIND THE GAP”. The application, filed in September 2021, sought to protect the phrase across a variety of goods in classes 9 and 18, including eyewear, luggage, and wallets. This phrase, familiar to regular London Underground users, has been used for over 50 years as a warning for passengers. More recently, MIND THE GAP has become known for the variety of branded merchandise sold by TfL (and many unauthorised sellers around Oxford Street).
GAP opposed the application, relying on its earlier marks for "GAP" in classes 9, 18, and 25, asserting grounds under sections 3(6) (bad faith), 5(2)(b) (likelihood of confusion), 5(3) (unfair advantage or detriment to reputation), 5(4)(a) (passing off), and 5(4)(b) (other earlier rights). TfL countered that “MIND THE GAP” had a distinctive, independent association with the London Underground and was not confusingly similar to "GAP". The UKIPO's decision raises a large number of interconnected issues including the question.
Key issues
Bad faith: GAP argued that TfL’s application breached a 2004 settlement agreement between the parties, which prohibited TfL from registering “MIND THE GAP” alone for certain goods, including “clothing accessories”. The tribunal found that the agreement remained binding and that TfL acted in bad faith by applying to register the mark in relation to specific goods (e.g., wallets, purses, and cardholders) that were explicitly covered by the agreement.
Likelihood of confusion: GAP’s case relied on the similarity between its “GAP” marks and “MIND THE GAP”. However, the tribunal found that the marks were visually and aurally similar only to a low-to-medium degree, with no significant conceptual similarity. Given the strong association of “MIND THE GAP” with the London Underground and the dissimilarity or low similarity of the goods, the tribunal rejected GAP’s argument that there was a likelihood of confusion.
Reputation and unfair advantage: GAP argued that TfL’s use of “MIND THE GAP” would exploit the reputation of GAP’s brand, which has a strong standing in the UK for clothing and accessories. The tribunal found no evidence that consumers would make a link between the two marks, particularly given the distinctive meaning of “MIND THE GAP” as a public safety warning and its long-standing use by TfL.
Passing off: GAP claimed goodwill in the "GAP" name and alleged that TfL’s use of “MIND THE GAP” would mislead the public. The tribunal dismissed this claim, finding no evidence of misrepresentation or likelihood of consumer confusion.
Other earlier rights: GAP’s reliance on the settlement agreement under section 5(4)(b) also failed. The tribunal held that contractual rights do not constitute “earlier rights” under this section, which applies to rights such as copyright or industrial property.
Outcome
The opposition succeeded in part. TfL’s application for “MIND THE GAP” was refused for specific goods that fell within the scope of the 2004 agreement, such as wallets, purses, and cardholders. However, the application was allowed for all other goods, including eyewear and various types of bags and cases.
What does this mean?
This case highlights the complexity of trade mark disputes where historical agreements and well-known public associations are involved. While TfL successfully defended its iconic slogan for most goods, the bad faith finding underscores the importance of respecting existing agreements. Businesses should ensure their trade mark strategies align with prior commitments to avoid costly disputes.
To find out more about the issues raised in this blog contact Rosie Burbidge.