Gap (ITM) Inc v Gap 360 Ltd

On an appeal from the Trade Marks Registry, an appellate court must respect the Registrar’s evaluative judgment but may intervene for a distinct and material error of principle. Trade mark specifications must identify goods and services with sufficient clarity and precision. A limitation is ineffective where its meaning creates unacceptable uncertainty for competitors, even if expressed as a qualification to particular services. In assessing likelihood of confusion, notional use of the earlier and later marks must be considered across their respective specifications. A finding that most consumers understand a term descriptively does not resolve the issue if a significant proportion of average consumers would regard it as distinctive and be likely to be confused.

Gap (ITM) Inc opposed Gap 360 Ltd’s application for the word mark “GAP 360” for services in classes 35, 36, 39 and 41. The opposition under section 5(2)(b) of the Trade Marks Act 1994 succeeded for the class 35 and 39 services but failed for classes 36 and 41 after the specification was amended to include “all relating to gap travel”.

Both parties appealed. The central issues were whether the Hearing Officer had erred in treating the limitation as producing different outcomes across the classes, whether “gap” and “gap travel” were sufficiently descriptive or distinctive, whether the limitation satisfied requirements of clarity and precision, and whether a significant proportion of average consumers would be likely to be confused.

1. Appeals allowed and dismissed. The opponent’s appeal was allowed and the applicant’s cross-appeal was dismissed. The application was sufficiently similar to the earlier GAP marks in all classes, and there was a likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994.
2. The Hearing Officer made an error of principle by treating the words “all relating to gap travel” as producing different results for the application’s specifications. The earlier marks had broad, unlimited specifications which notionally encompassed gap travel services. Notional use had to be assessed across the full range of the respective specifications, applying Maier v Asos [2015] FSR 20.
3. The Hearing Officer was entitled to find that most average consumers understood “gap year”, “gap travel” and “gap” in the relevant context by reference to a break between stages of education or employment. However, that finding did not address the understanding of a significant proportion of average consumers. The court found that such consumers would understand “gap travel” more broadly, including career breaks, redundancy-related travel and retirement travel, without a fixed duration, destination or purpose.
4. The expression “all relating to gap travel” lacked sufficient clarity and precision. Competitors could not determine with acceptable certainty whether their services fell within the limitation. The qualifier therefore failed the legal-certainty principles in IP Translator [2012] ETMR 42 and Postkantoor [2004] E.C.R. I-1619; it could not be used in assessing similarity or distinctiveness. The applicant could alternatively withdraw the amendment, producing the same result.
5. Under section 5(2)(b), confusion may be established by a significant proportion of the relevant public, including consumers for whom the earlier mark is distinctive of origin. The ordinary meaning of “gap” in the travel context was a matter for the court, not witnesses. The identical initial element “GAP”, together with identical or similar services and the Hearing Officer’s remaining analysis, supported a likelihood of confusion.

• High Court (Chancery Division): allowed the opponent’s appeal and dismissed the applicant’s cross-appeal.
• Intellectual Property Office Trade Marks Registry: the Hearing Officer allowed the opposition under section 5(2)(b) for classes 35 and 39, but rejected it for classes 36 and 41 after permitting the limitation “all relating to gap travel”.