Mind the Gap Trade Mark

A recent UKIPO Trade Mark Opposition Decision (No. O/1219/24 Trade Marks Inter Partes Decision O/1219/24) provides an interesting consideration of a less frequently used ground of opposition.

Transport for London (TFL) applied for a trade mark for their well known phrase MIND THE GAP for various goods in Classes 9 and 18. This was opposed by Gap (ITM) Inc., who hold various rights in GAP for clothing and accessories.

In London, and likely elsewhere in the UK, MIND THE GAP is well known on public transport, with the phrase introduced in 1968 on the London Underground.  This was one year before the Opponent was founded in 1969 (and they entered the UK market some years later). TFL has sold a range of MIND THE GAP merchandise in the London Transport Museum Shop from at least 1975. Despite the apparent long history of use by TFL and coexistence of the parties in the UK, they entered into a confidential settlement agreement in 2004 which precluded TFL from registering the words MIND THE GAP alone in relation to ‘clothing accessories’. Gap claimed the opposed application breached the agreement. Gap therefore opposed the application on a number of grounds, including earlier rights under Sections 5(2)(b), 5(3) and 5(4)(a), bad faith under Section 3(6) and a claim under 5(4)(b). 

Gap’s claims based on earlier rights all failed.  The Hearing Officer stated: “It is important to note this is not about the applicant’s prior use of the contested mark as a trade mark. Rather, it goes to the conceptual meaning of the mark to average consumers. The fact that the three words at issue in this case form a composite term with a strong, specific, conceptual meaning to, at the very least, a significant proportion of the UK public is relevant because it reduces (in my view, to zero) the risk of that section of the public mistaking the contested mark for another trade mark comprised of just one those three words”.

The opposition succeeded under bad faith against part of the specification which was found to constitute clothing accessories (“Purses and wallets, including purses for travel cards and passes, purses for payment cards; wallets for travel cards and passes, and wallets for payment cards; card cases and holders for cards and passes”) due to the 2004 agreement. Part of the bad faith analysis is redacted in the decision due to the confidential nature of the agreement, but when filing the application TFL knew it would be in breach of the agreement and that is inconsistent with honest practices. Whist TFL claimed that they had continued to grant licences for MIND THE GAP merchandise after the 2004 agreement and had a long history of use of the mark on goods which Gap had not complained about, there was no evidence showing MIND THE GAP in use in relation to purse and wallet- type goods after the date of the 2004 agreement or at all. In the circumstances the Hearing Officer was unable to attach any weight to the absence of complaints from Gap about TFL’s use of MIND THE GAP in relation to purses, wallets, and travel cards and bad faith was found in relation to those goods only.

Gap also made a claim under 5(4)(b) on the basis that the 2004 agreement could be a ground of opposition.  

Section 5(4)(b) states:

“(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented- … (b) by virtue of an earlier right other than those referred to in subsections(1) to (3) or paragraph (a) or (aa) above, in particular by virtue of the law of copyright, or the law relating to industrial property rights.”

The Hearing Officer analysed the agreement and noted that it only related to trade marks, and not other rights such as copyright or designs that are normally relied upon under 5(4)(b). Going back to the source of the legislation, the Hearing Officer considered the optional provision in Article 4(3)(c) of the EU Trade Marks Directive, that was implemented in the UK Trade Marks Act by section 5(4)(b), allows for opposition “by virtue of an earlier right other than [registered and unregistered trade mark] rights referred to in paragraphs 2 and 4 (b) and in particular: (i) a right to a name; (ii) a right of personal portrayal: (iii) a copyright; (iv) an industrial property right;”. The language is clear that this covers earlier rights “other than” trade mark rights. As the 2004 agreement relates purely to trade marks, with the subject matter being the trade marks GAP and MIND THE GAP, it did not fall within 5(4)(b).

The Hearing Officer further considered whether an agreement could be an earlier right that could be relied upon in an opposition, noting that in both the Act and Directive the earlier rights allowed for could be exercised against any third party who were to infringe those rights. However, a contractual right resulting from an agreement can only be exercised against the parties to that agreement. If Gap were allowed to rely on section 5(4)(b) to enforce the terms of their agreement, this would be an anomaly as it would be “the only relative ground of refusal the very existence of which depended, in part, on the identity of the applicant”. The Hearing Officer concluded that section 5(4)(b) of the Act does not protect private contractual rights relating to trade marks. Gap’s claim under this ground therefore failed.

As a defence to the opposition, TFL claimed a breach of the 2004 agreement by Gap having sold clothing patches featuring MIND THE GAP meant it was terminated in 2019, and therefore the agreement could not be relied upon for the section 3(6) and 5(4)(b) claims. The Hearing Officer revisited Chitty on Contracts, to remind the parties that not every breach of a contract justifies its termination (or relieves the non-breaching party from its obligations under the contract). Whilst a right to terminate would arise where a condition of the contract is breached, the Hearing Officer did not find that the alleged breach of the 2004 agreement was likely to be a breach of a condition of the contract or that there was any indication that the clause breached could lead to termination. The Hearing Officer went on to note that any financial loss caused to TFL would have been small, the agreement had been in place for 15 years prior to the breach, Gap had stopped selling the clothing patches and resumed compliance with the agreement, and damages would be adequate to compensate TFL. As such, Gap’s alleged breach was unlikely to be sufficient to justify the termination of the 2004 agreement and this defence to the 3(6) bad faith finding failed.

After Gap’s partial victory, the issue of costs is to be decided, with Gap requesting costs off the scale for filing evidence to establish the use, reputation, and goodwill of GAP in relation to clothing as they regard such matters are common knowledge. Although use of GAP on clothing may be commonly known, the extent to which evidence of reputation and goodwill can be regarded as common knowledge with little or any evidence being filed may be an interesting point of debate between the parties. . If TFL were found to be unreasonable in pushing for such evidence Gap may be awarded an off-scale costs.

This decision is an interesting review of the purpose and limits of 5(4)(b), and a reminder of the need to look into a crystal ball as far as possible when entering into coexistence agreements as well as being clear as to what the terms mean.  As the agreement is confidential we cannot be certain of the language used, and whether it was envisaged that clothing accessories would include purses and wallets, including wallets for travel cards and passes, when such goods are inherently tied to travel and the transport network that MIND THE GAP is so well known for, is difficult to guess. When drafting agreements it is important that the parties know what they can and cannot do, and consider as far as possible how this may impact their future business.