Mind the Gap: 
Unused trade marks

British American Group Ltd sought to register 'The GapTravel Guide' as a UK trade mark in respect of the services of 'magazine publishing'. The application
was opposed by Gap (ITM) Inc, which owns the GAP trade marks used in relation to GAP-branded clothing stores.

Gap's opposition relied on a trade mark for GAP that it had registered in 2013 in relation to a range of services, including 'publication of books'. Gap said that 'travel guide' was descriptive of the proposed use, so the dominant element of 'The GapTravel Guide' was the word 'GAP'. Further, the services for which the mark was applied were identical or similar to those for which its mark was registered. Gap claimed there was a likelihood of confusion, so the 'The GapTravel Guide' should be refused registration pursuant to section 5(2)(b) of the Trade Marks Act 1994.

The Intellectual Property Office hearing officer dismissed Gap's opposition, but its appeal to the High Court was upheld
in Gap (ITM) Inc v British American Group Limited [2016] EWHC
599 (Ch).

Trade marks are vulnerable to revocation where they have not been used for a period of five years, to avoid giving monopoly rights in respect of marks which are not being put to use.

In the current case, Gap
had not used its trade mark in relation to publishing. However, since the mark had been registered for less than five years, it was not required to prove use of the mark. Instead, following settled case law, the mark was treated as if it had been put to 'a notional and fair use' in relation to the full range of services for which it had been registered, including publishing.

Average consumer

When assessing whether a mark should be refused registration under section 5(2)(b) of the Act, one needs to conduct a global assessment through the eyes of the average consumer.

The hearing officer identified the average consumer of 'magazine publishing' services
as businesses that require publication of material. He reasoned that members of the general public are less likely to be regular consumers of such services, and went on to say that the purchasing process is likely to be well considered and may involve a relatively expensive procurement. The effect of this is that the average consumer would be less likely to be confused than a purchaser of everyday low-value goods, who might pay less attention, and so the hearing officer's decision on this assisted the applicant, British American Group.

However, in the High Court, Judge John Baldwin QC disagreed. He considered that as magazines are an end product of the service of publication, and as magazines are commonly purchased by members of the public, the 'average consumer' included members of the public, so confusion was more likely.

Interestingly, earlier this year in The London Taxi Corporation v Frazer-Nash [2016] EWHC 52 (Ch), Mr Justice Arnold reached the opposite conclusion. He accepted that there was authority for end users of goods being relevant consumers, but in that case, the end products were taxis (which were used, but not ordinarily purchased, by members of the public). Arnold J deemed the average consumer to be the average taxi driver, as a consumer of taxis, not members of the public. That judgment has been appealed to the Court of Appeal.

Conceptual similarity

The hearing officer considered there to be an allusion to 'gap year' travel in 'The GapTravel Guide', which served to reduce the overall similarity between the marks in issue. However, the judge took the view that a necessary corollary of the hearing officer's conclusion was that the allusion offered by the applicant's mark must also be offered by the opponent's mark. This was because a notional and fair use of the GAP mark would include use in relation to travel guide publishing - it might be used, for example, as 'Gap Travel Guide'.

The judge considered that there was a likelihood of confusion if 'The GapTravel Guide' were used orally, because a significant proportion of the public with the perceptions and expectations of the average consumer would think that the services of Gap (i.e. under the GAP mark relied upon) were being referred to.

He agreed with Gap that in the context of travel guides, which pertained to the notional and fair use of magazine publishing services, the word 'GAP' is the differentiating factor between those travel guides and those of some third party. The judge
held that the 'neologism or portmanteau' (i.e. the merging
of the two words into one) of GapTravel in the graphic representation of the mark applied for was not sufficient
to remove the likelihood of confusion.The decision highlights the value of opposing a mark based on a relatively young registration. Gap's opposition was not affected by its lack of any actual use of its mark, and it was able to take advantage of a broad interpretation of the notional use to which the mark could be put, crafted around the mark being applied for.

George Sevier is a principal associate in the IP team at Gowling WLG and an associate member of ITMA @ITMAuk www.itma.org.uk