In a recent decision (*O/1219/24*), the UK Intellectual Property Office (UKIPO) partially refused Transport for London’s (TfL) application to register the slogan MIND THE GAP as a UK trade mark (UKTM) on the grounds of bad faith, stemming from a prior agreement between TfL and clothing retailer GAP (ITM) Inc.
Background: TfL’s Trade Mark Application
In September 2021, TfL—the government body overseeing London’s transport network—applied to register MIND THE GAP as a UKTM for goods in Class 9 (eyewear, helmets) and Class 18 (leather goods, bags, umbrellas, etc.).
GAP, owner of the well-known fashion brand GAP, opposed the application on multiple grounds, including:
- Bad faith (Section 3(6) of the Trade Marks Act 1994 (TMA))
- Likelihood of confusion due to similarity with GAP’s earlier marks (Section 5(2) TMA)
- Unfair advantage/detriment to GAP’s reputation (Section 5(3) TMA)
- Passing off and earlier rights(Section 5(4)(a) & (b) TMA)
GAP relied on a confidential 2004 settlement agreement (the Agreement) with TfL, arguing that registering MIND THE GAP alone for certain goods would breach its terms. While TfL acknowledged restrictions on using the mark for “clothing accessories,” it argued that its application covered different goods (e.g., “eyewear and bags”).
UKIPO’s Decision
-
Similarity of Goods & Marks
The UKIPO found that bags in Class 18 overlapped with GAP’s prior registrations, but rejected claims of “high similarity” between other goods (e.g., helmets vs. hats, belts for clothing vs. bag straps).
On mark similarity, GAP argued that “GAP” was the dominant element of TfL’s mark, but the UKIPO disagreed. Applying Herno v Miss Sparrow, it ruled that consumers perceive marks as a whole—meaning MIND THE GAP (a well-known warning on the London Underground) was conceptually distinct from GAP’s standalone brand.
-
Likelihood of Confusion & Passing Off
The UKIPO found no likelihood of confusion, as the composite phrase MIND THE GAP had a strong, independent meaning for UK consumers, reducing any risk of association with GAP’s brand.
Similarly, passing off claims failed, as there was no evidence the public would mistakenly link TfL’s goods to GAP.
-
Reputation & Detriment (Section 5(3) TMA)
While GAP proved a strong reputation in clothing (Class 25), the UKIPO found no meaningful link between its brand and TfL’s proposed use of MIND THE GAP on unrelated goods.
-
Contractual Rights & Bad Faith
GAP unsuccessfully argued that the Agreement created earlier rights under Section 5(4)(b) TMA—the UKIPO clarified that private contracts do not create enforceable trade mark rights.
However, under bad faith (Section 3(6) TMA), the UKIPO ruled that TfL’s application breached the Agreement regarding purses and wallets (deemed “clothing accessories”). Despite TfL’s arguments, the Agreement was still in effect, and filing the application contravened its terms.
As a result, the UKIPO partially refused the application for these goods but allowed it to proceed for other items (e.g., helmets, non-accessory bags).
Key Takeaways
This decision highlights:
- Bad faith remains a potent ground for opposition, especially where prior agreements restrict trade mark filings (Sky v Skykickreinforced this).
- Contractual obligations matter—even if not enforceable under trade mark law, breaching them can support a bad faith claim.
- Composite marks with distinct meaningsmay avoid confusion claims, even if they contain another brand’s name.
For businesses with coexistence or settlement agreements, careful compliance is essential—attempting to circumvent terms could lead to costly disputes. Contact Revomark for professional Trademark registration advice.
By Revomark – UK Trademark Registration Experts
Revomarks Trademark Registration Services available to you.
