Gap (ITM) Inc v Gap 360 Ltd [2019] EWHC 1161 (Ch) (10 May 2019)

Gap (ITM) Inc v Gap 360 Ltd [2019] EWHC 1161 (Ch) (10 May 2019)

The specification amendment 'all relating to gap travel' lacks clarity and precision, creating unacceptable legal uncertainty; the similarity between the marks and services, without the amendment, results in a likelihood of confusion for a substantial proportion of average consumers. The Hearing Officer erred in relying on the amendment to distinguish services and in not considering the impact on all relevant consumers.

Citation
[2019] EWHC 1161 (Ch)
Parties
Appellant/respondent to the Cross Appeal: GAP (ITM) INC; Respondent/appellant in the Cross Appeal: GAP 360 LTD
Jurisdiction
England and Wales
Judgment Date
10 May 2019
Procedural Posture
Trade Mark Appeal / Appeal From IPO Decision
Outcome
opponent's appeal allowed; applicant's cross-appeal dismissed
Legal Topics
Distinctiveness of Marks, Likelihood of Confusion, Clarity and Precision in Specifications, Legal Certainty, Trade Mark Specification Amendments
Intellectual Property Trade Marks Distinctiveness of Marks Likelihood of Confusion Clarity and Precision in Specifications Legal Certainty Trade Mark Specification Amendments

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 18 Party arguments 2 Amounts and remedies 3
Sign in to unlock

Parties

GAP (ITM) INC

Appellant/respondent to the Cross Appeal

GAP 360 LTD

Respondent/appellant in the Cross Appeal

Procedural Posture

Trade Mark Appeal / Appeal From IPO Decision

Legal Issues

  1. 1 Whether the term 'gap travel' in trade mark specifications is sufficiently clear and precise
  2. 2 Whether the word 'gap' is distinctive or descriptive in the context of travel services
  3. 3 Whether the Hearing Officer erred in assessing likelihood of confusion based on specification amendments

Ratio Decidendi

The specification amendment 'all relating to gap travel' lacks clarity and precision, creating unacceptable legal uncertainty; the similarity between the marks and services, without the amendment, results in a likelihood of confusion for a substantial proportion of average consumers. The Hearing Officer erred in relying on the amendment to distinguish services and in not considering the impact on all relevant consumers.

Court Disposition

opponent's appeal allowed; applicant's cross-appeal dismissed

Orders

  • The opposition under section 5(2) succeeds in relation to all classes applied for.
  • The specification amendment 'all relating to gap travel' is disregarded or withdrawn.