Gap (ITM) Inc v British American Group Ltd

On an appeal from a specialist trade mark tribunal, the court should review for a distinct and material error of principle and show real, but not excessive, reluctance to interfere. Under section 5(2)(b) of the Trade Marks Act, the assessment of confusion is global and must reflect notional and fair use of both marks across their specifications. It is made through the eyes of the average consumer, taking account of the practical relationship between a service and its end product. Where magazine publishing services correspond closely with the magazines produced and distributed, consumers of those magazines may also be consumers of the publishing service. A composite mark containing an earlier mark may create a likelihood of confusion even where the additional words suggest a different concept, particularly where the earlier mark remains the differentiating element.

Gap (ITM) Inc appealed against the dismissal by the Registrar of Trade Marks of its opposition to registration of “The GapTravel Guide” for magazine publishing services in Class 41. The opposition proceeded only under section 5(2)(b) of the Trade Marks Act, relying on the earlier GAP mark registered for specified publishing-related services.

The Hearing Officer found the services identical or highly similar, but considered that the average consumer would generally be a business procuring publishing services. He also found low visual and aural similarity, no conceptual similarity, and that GAP in the application alluded to “gap year” rather than the earlier mark. The central issues were the proper identification of the average consumer and the correct comparison of the marks in the context of notional use.

1. The appeal was allowed. The court reviewed the Registrar’s decision for a distinct and material error of principle, showing appropriate respect for the specialist tribunal under Reef Trade Mark [2002] EWCA Civ 763 and AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49.

2. The relevant comparison required notional and fair use of both marks across the full range of their respective specifications. That approach applied even though the earlier mark had not been used, consistently with Reed Executive v Reed Business Information [2004] RPC 40 and the Community trade mark approach referred to in T.I.M.E. ART v OHIM, Case C-171/06 P, [2007] ETMR 38.

3. The likelihood-of-confusion assessment was global and had to be made through the eyes of the average consumer, taking account of the overall impressions of the marks, their distinctive and dominant components, imperfect recollection, the degree of similarity between the services and marks, and the distinctive character of the earlier mark. The court applied the summary in Maier v Asos [2015] FSR 20, drawing on Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 and Canon [1999] FSR 332.

4. The Hearing Officer had erred in treating the average consumer of magazine publishing services as generally a business procuring relatively expensive services. The applicant’s production and distribution of magazines constituted the relevant publishing service, and there was a high degree of correspondence between that service and its end product. The court considered that a consumer of the magazines could also be a consumer of the service. This practical approach was consistent with Interflora v Marks and Spencer [2014] EWCA Civ 1403.

5. The Hearing Officer’s reasoning was internally inconsistent. If GAP in “The GapTravel Guide” was likely to allude to gap-year travel, the same allusion could arise from GAP when used for travel-guide publishing services. The court also had to take account of oral use, under section 103(2) of the Trade Marks Act, in which the conjoining of GAP and TRAVEL might not be perceived.

6. In the court’s own global assessment, “GapTravel” was insufficient to remove the likelihood of confusion. Guides and travel guides were common subject matter for magazine publishing services, and GAP remained the differentiating element. There was therefore a real risk that a significant proportion of average consumers would believe that the services or products came from the same or economically linked undertakings. The section 5(2)(b) objection succeeded.

1. High Court (Chancery Division) — Appeal allowed from the Registrar of Trade Marks’ decision in Case O-450-15, [2015] UKIntelP o45015.