Mind the GAP! British American Group v GAP (ITM)

Background

British American Group Limited (BAGL) applied to register "The GapTravel Guide" as a UK trade mark for 'magazine publishing' in class 41.

Gap (ITM) (Gap), the well-known clothing retailer opposed registration of this mark based on its earlier trade mark GAP which it had registered for services in class 41 including 'Publication of electronic books and journals online; Writing of texts [other than publicity texts]; Publication of texts, other than publicity texts; Providing on-line electronic publications, not downloadable; and Publication of books'. The mark GAP had been registered for less than five years and so Gap was not required to prove that it had used the mark.

The hearing officer dismissed the opposition and allowed registration of "The GapTravel Guide".

Appeal

Although the opposition had included a number of grounds, the appeal was based on one relative ground for refusal, namely that due to the similarity of the marks and services applied for, there was a likelihood of confusion on the part of the public.

The average consumer

An important aspect when determining likelihood of confusion is it must be considered through the eyes of the average consumer of the services in question. The appellant (Gap) in this case had called into question the Hearing Officer's assessment of the average consumer, arguing that the Hearing Officer had not identified the correct average consumer. As a consequence, the Hearing Officer had not carried out the correct comparison of the marks, as he was unable to make the comparison "through the right eyes".

The Hearing Officer had considered that the average consumer of publishing services would generally be a business in need of publication of material; and that such consumers were likely to undertake the purchasing process in a more considered fashion.

In the court's view, this was not the correct conclusion. The judge commented that "the law of trade marks should take some cognisance of what traders actually think and do" and that the concept of "the average consumer was created to strike the right balance between various competing interests including the need to protect consumers, and the promotion of free trade in an openly competitive market".

The judge's view was that BAGL, who applied for "The GapTravel Guide", was carrying out the service of magazine publishing by producing and distributing magazines, and there was a high degree of similarity between the carrying out of that service and the magazines which are the end product of that service. Therefore the conclusion that the consumer of the product of such a service was not also a consumer of the service itself was too narrow and impractical.

The Hearing Officer had concluded that the respective specifications of the mark as applied for "The GapTravel Guide" and GAP where identical, or very similar. Neither side appealed that conclusion.

Similarity of the marks

The Hearing Officer concluded that the marks shared a low level of visual similarity, a low level of aural similarity and no conceptual similarity.

Although GAP argued that the Hearing Officer was incorrect in his conclusion in relation to all three areas of similarity, it said it was most striking in relation to conceptual similarity and only that needed to be dealt with by the court.

In the circumstances, and bearing in mind that the judge's view was that the Hearing Officer had erred in his assessment of the average consumer, it was necessary to consider matters afresh.

Taking into account the assumed reputation of the mark GAP, what needed to be considered was whether there was a risk that the public, with the perceptions of the average consumer, would be confused into the mistaken belief that praise/criticism awarded to the travel guides, or travel guide publishing services of the applicant, were in fact the services of the opponent, Gap. The judge's view was that there was such a risk. This was based on his view that guides and travel guides are common subject matter for magazine publishing services and the presence of 'GapTravel' in BAGL's mark was not enough to remove the likelihood of confusion. It was the word "Gap" which was the differentiating factor between those guides or travel guides, and those of some third party. For these reasons, the judge allowed the appeal.

Case details at a glance

Jurisdiction: England and Wales
Decision level: High Court (Chancery Division)
Parties: Gap (ITM) Inc v British American Group Limited
Citation: [2016 EWHC 599 (CH)]
Date: 21 March 2016
Full decision: http://dycip.com/2016ewhc599