Did Transport for London need to mind the gap?

In 2022, clothing brand GAP Inc. opposed Transport For London’s (TFL) application for a mark reflecting the refrain heard by thousands of London commuters every day: MIND THE GAP.

TFL’s application for the word mark MIND THE GAP covered class 9 (eyewear) and class 18 (bags, wallets, umbrellas, etc.) and GAP Inc. opposed it based on two groups of rights:

1. Likelihood of confusion with, unfair advantage of the repute in, and passing off of, the famous clothing brand GAP; and
2. That it had been applied for in bad faith, and additionally, was contrary to Section 5(4)(b) of the Trade Mark Act – both of which grounds relied on the breach of a settlement agreement from 2004 which precluded TFL from registering the mark MIND THE GAP alone in relation to “clothing accessories.”

In the decision dated December 24, 2024, the group one grounds were held to have failed, with the UK Intellectual Property Office (UKIPO) Hearing Officer stating: “I consider it very unlikely that average consumers will dissect MIND THE GAP into MIND THE and GAP, and disregard or downgrade the distinctive significance of MIND THE in the composite term.” The Hearing Officer decided there was no likelihood of confusion, no link or unfair advantage/detriment, and no passing off.

The Hearing Officer also held Section 5(4)(b) – a ground of opposition based on “…an earlier right other than those referred to elsewhere in particular by the law of copyright, or the law relating to industrial property rights” – does not protect private contractual rights relating to trademarks, so that ground failed.

This left the ground of bad faith to be argued. TFL’s arguments, that the 2004 agreement was not still binding when it applied for the mark, were dismissed. TFL had argued there had been a breach by GAP Inc. in 2019 by selling decorative patches bearing the London Underground logo and the slogan, but the UKIPO did not feel the facts of this breach gave TFL termination rights.

TFL further argued that, due to Brexit, the agreement no longer covered the UK. The UKIPO held this relied on ambiguous wording in the agreement and was against the spirit of the agreement. Thus, TFL was still bound, and it was held that some of the goods applied for, namely purses and wallets, did fall within the excluded “clothing accessories” category, and for TFL to have applied for them in light of the earlier agreement was bad faith.

As a result, GAP Inc. succeeded in opposing this single ground for some of the goods, but MIND THE GAP can now be registered for most of the goods applied for in classes 9 and 18.

This decision includes an interesting brief history of TFL’s MIND THE GAP slogan (introduced in 1968) and its use in TFL’s licensing program.

It is also interesting to note the cost awards, which are to be the subject of a supplementary decision. Both sides asked for an award of costs off the usual scale. GAP Inc. argued it was unreasonable of TFL to require evidence use and reputation in the name GAP for clothing, which it claimed are matters of common knowledge. TFL persisted in its request even after a letter from the UKIPO asked them to reconsider whether their requests for proof of such use and reputation were justified. The UKIPO noted that unreasonable behavior can, in principle, justify an award of off-scale costs, even where the party responsible is ultimately successful on the grounds concerned. Further, the decision to reject the group one grounds does not, therefore, preclude GAP Inc. from pursuing its request for off-scale costs.

If TFL is ultimately penalized for insisting GAP Inc. prove these elements of its case, I consider this harsh. Especially as an admission that a brand has a reputation for certain goods doesn’t answer all the relevant questions. Without evidence, that admission does not tell the tribunal about the nature of the reputation, which is part of the assessment of whether the use by TFL would take unfair advantage, for example, why they would benefit from the transfer of that brand’s image.

Access the full case HERE.

← Back to News