Gap (ITM) Inc v Gap 360 Ltd

Gap (ITM) Inc v Gap 360 Ltd

The expression 'all relating to gap travel' lacks the required clarity and precision for a trade mark specification, creating legal uncertainty. The Hearing Officer erred in distinguishing between classes based on this limitation. A significant proportion of average consumers would not consider 'gap' descriptive of travel services, and there is a likelihood of confusion between GAP and GAP 360 for all relevant services. The opposition under section 5(2)(b) should succeed in full.

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 Opposition Appeal / High Court Appeal From IPO Decision
Outcome
opponent's appeal allowed; applicant's cross-appeal dismissed
Legal Topics
Distinctiveness of Trade Marks, Likelihood of Confusion, Clarity and Precision of Specifications, Legal Certainty in Trade Mark Law
Intellectual Property Trade Marks Distinctiveness of Trade Marks Likelihood of Confusion Clarity and Precision of Specifications Legal Certainty in Trade Mark Law

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Parties

Gap (ITM) Inc

Appellant/respondent to the Cross Appeal

Gap 360 Ltd

Respondent/appellant in the Cross Appeal

Procedural Posture

Trade Mark Opposition Appeal / High Court Appeal From IPO Decision

Legal Issues

  1. 1 Whether the term 'gap' is distinctive or descriptive in the context of travel services
  2. 2 Whether the specification 'all relating to gap travel' is sufficiently clear and precise for trade mark registration
  3. 3 Whether the Hearing Officer erred in partially upholding the opposition under section 5(2)(b) of the Trade Marks Act 1994

Ratio Decidendi

The expression 'all relating to gap travel' lacks the required clarity and precision for a trade mark specification, creating legal uncertainty. The Hearing Officer erred in distinguishing between classes based on this limitation. A significant proportion of average consumers would not consider 'gap' descriptive of travel services, and there is a likelihood of confusion between GAP and GAP 360 for all relevant services. The opposition under section 5(2)(b) should succeed in full.

Court Disposition

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

Orders

  • Opposition under section 5(2)(b) succeeds for all classes applied for
  • Application for GAP 360 mark refused in its entirety