Transport for London v Gap [O/1219/24] – Mind The Gap

The UKIPO has partially refused Transport for London’s (the “Applicant”) application for the proposed trade mark MIND THE GAP. The opposition was brought by GAP (ITM) INC (the “Opponent”).

Background

The Applicant applied for the word mark MIND THE GAP, which covered (amongst others) class 9 for eyewear and class 18 for leather goods.

In addition to filing for grounds based on section 5(2), section 5(3) and section 5 (4)(b) of the Trade Marks Act 1994 (the “TMA”), the Opponent also filed for grounds of bad faith as per section 3 (6) of the TMA.

For the above, the Opponent relied on a confidential settlement agreement which they allege precludes the Applicant from registering MIND THE GAP in relation to clothing. The Opponent also relied on its goodwill in the mark “GAP”. In response, the Applicant contended that the term MIND THE GAP had become synonymous with the London Underground system and that it ‘is an important part of its corporate identity’.

Decision

For the purposes of this article, we will be focusing on the bad faith grounds.

The UKIPO referred to the UK Supreme Court’s recent ruling in Sky v Skykick and in particular made reference to the following

“There can be no doubt that making an application the applicant knows, or has reason to know, is in breach of an agreement with a third party is inconsistent with honest practices and potentially renders the application subject to refusal or invalidation on grounds of bad faith”.

The UKIPO held that the Applicant had no grounds to believe that the settlement agreement had been terminated. On this basis, the UKIPO held that the Applicant was not permitted to register the words MIND THE GAP alone in relation to “clothing accessories”.

Briffa comment

Any applicant seeking to register a trade mark in the UK will need to ensure it complies with any coexistence or settlement agreement it has entered into that relate to the mark applied for.

The litigation landscape for trade marks is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the trade mark litigation space for 30 years.