Gap (ITM) Inc v Gap 360 Ltd

This is an appeal from a decision of Mr George Salthouse, a very experienced Hearing

Gap (ITM) Inc is a well-known retailer of clothing, footwear and head gear. It opened its first store in the UK in 1987 and at the time that it filed evidence in the Opposition, had 140 stores in the UK, with additional stores in Europe. According to the evidence of Mr David Stitt, the managing director of Gap 360 Ltd, the company was incorporated in May 2011 and its purpose is to provide “gap year opportunities” to young people. It has been well received in the marketplace and has grown significantly. In the calendar year 2014, Mr Stitt stated that the respondent would book 3750 passenger trips, with a turnover of £3.3 million.

Gap (ITM) Inc is the proprietor of various earlier Community trade marks registered in respect of the sign “GAP” in classes 35, 36, 39 and 41 (“the Earlier Trade Marks”). The Hearing Officer found that the respective specifications of the Application and the Earlier Trade Marks are “identical for the most part, with only minor exceptions being similar to a medium degree”; (Decision paragraphs [24] and [40] and Annex 1). The Hearing Officer’s findings in respect of identity and similarity are not challenged on this appeal. The services identified in the specifications of the Application and the Earlier Trade Marks are generally connected with travel.

The Opposition was based on sections 5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994. It was unsuccessful in respect of sections 5(3) and 5(4) but was partially successful in respect of section 5(2)(b). Specifically, the Opposition was successful under section 5(2)(b) in relation to all of the class 35 and 39 services applied for, but unsuccessful in relation to all of the class 36 and 41 services applied for.

Both sides have appealed, but only in relation to s. 5(2)(b). Neither appeal concerns trade marks registered in respect of clothing nor Gap (ITM) Inc’s reputation as a high street clothing retailer. Gap (ITM) Inc’s evidence about its trading and reputation is therefore irrelevant to the appeals. To avoid confusion in dealing with the two appeals, the parties referred to Gap (ITM) Inc. as “the opponent” and Gap 360 Ltd as “the applicant”. I shall do the same.

The applicant applied to amend the specifications in respect of the class 36 and 41 services to add the qualification “all relating to gap travel”. That amendment was not made in respect of the class 35 and 39 specifications. The amendment was allowed by the Hearing Officer, and it was crucial to his ultimate conclusion. He found at [41] of the Decision that there was a likelihood of consumers being confused into believing that the services in classes 35 and 39 provided by the applicant were those of the opponent or provided by some undertaking linked to the opponent. However, in relation

This conclusion was based upon his findings at paragraphs [34] – [36] that the word “gap”, in the context of services related to “gap travel”, has a low level of distinctiveness. He concluded that, given the low level of distinctiveness of the word “gap” when used for services relating to gap travel, the similarity between the marks was outweighed by the difference created by the presence of the “360” element in the applicant’s mark.

The distinction drawn by the Hearing Officer, which depended on the presence of the limitation to “gap travel” in the specification of services, is evident from paragraph [39] of the Decision, where he said:

“The opponent’s mark is a well known English word whose distinctive character lies within its whole. When used for gap travel services in classes 36 and 41 it is descriptive of those services and so has a low level of distinctiveness. When used on services in classes 36 & 39 it is not directly or indirectly descriptive of the services and so has an average level of inherent distinctiveness. The opponent has filed evidence of use of its mark in the UK on clothing, footwear and headgear. However, it has not filed any evidence of use for the services upon which it relies under this ground of opposition. The opponent cannot benefit from enhanced distinctiveness”

This distinction was then reflected in his assessment of the likelihood of confusion. At [40] the Hearing Officer summarised the factors that he considered relevant:

“In determining whether there is a likelihood of confusion, a number of factors need to be borne in mind. The first is the interdependency principle i.e. a lesser degree of similarity between the respective trade marks may be offset by a greater degree of similarity between the respective services and vice versa. As I mentioned above, it is also necessary for me to keep in mind the distinctive character of the opponent’s trade mark as the more distinctive this trade mark is, the greater the likelihood of confusion. I must also keep in mind the average consumer for the services, the nature of the purchasing process and the fact that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them he has retained in his mind. Earlier in this decision, I concluded that:

•

the average consumer is a member of the general public (including businesses), who will select the services by predominantly visual means and who will pay a moderate to high degree of care and attention when doing so;

•

The respective specifications are identical for the most part, with only minor exceptions being similar to a medium degree (see paragraph 24 above).

•

In comparing the mark in suit to the opponent’s marks the competing trade marks have a moderate degree of visual and aural distinctive similarity when used on services not related to gap travel. Conceptually the marks are highly similar. However, when used for services related to gap travel the similarity of the low distinctiveness element GAP is outweighed by the difference of the distinctive “360” element.”

He then concluded at [41] that:

“In view of the above and allowing for the concept of imperfect recollection, there is a likelihood of consumers being confused into believing that the services in classes 35 and 39 provided by the applicant are those of the opponent or provided by some undertaking linked to them. In reaching this conclusion I have not relied upon the survey filed by the applicant, at least partly because no permission was given to file it. The opposition under Section 5(2) (b) therefore succeeds in relation to the services in classes 35 and 39. However, in relation to the services in classes 36 and 41 there is no likelihood of consumers being confused into believing that these services provided by the applicant are those of the opponent or provided by some undertaking linked to them. The opposition under Section 5(2) (b) therefore fails in relation to the services in classes 36 and 41”

A comprehensive summary of the applicable principles was provided by Daniel Alexander QC sitting as the Appointed Person in TT Education Ltd v Pie Corbett Consultancy Ltd (O/017/17) at [14] to [52]. This was approved by Arnold J in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch). References to the Appointed Person in the following citation should be taken as applicable to appeals to the High Court:

“(i)

Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11). The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977, CPR 52.11).

(ii)

The approach required depends on the nature of decision in question (REEF). There is spectrum of appropriate respect for the Registrar's determination depending on the nature of the decision. At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions. Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont).

(iii)

In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re: B and others).

(iv)

In the case of a multifactorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions. In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation (REEF, BUD, Fine & Country and others).

(v)

Situations where the Registrar's decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong. It is not necessary for the degree of error to be 'clearly' or 'plainly' wrong to warrant appellate interference but mere doubt about the decision will not suffice. However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re: B).

(vi)

The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed. Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently. Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account. (REEF, Henderson and others).”

Mr Malynicz QC, who appeared on behalf of the opponent, submitted that the Hearing Officer’s conclusion as to the meaning of all of these words is set out in paragraph [34] of the Decision. This paragraph follows a summary of the applicant’s contention (set out at [30]) that the word “gap” in the context of the services covered by the Application must be regarded as being non-distinctive or descriptive; and of the opponent’s contention (set out at [32]) that although “gap” is a common English word, it is not inherently descriptive of, nor does it allude to, any of the goods or services the subject of the opponent’s Earlier Trade Marks.

Having set out the rival contentions, the Hearing Officer said at [34]:

“When the term “Gap Year” was initially coined it referred to taking a year out between either (sic), finishing at school and starting at university, thus taking an academic year off rather than actually travelling for a year. To my mind, it will still retain this meaning. The term “gap” was also used to describe a break between finishing university and starting work, but this was usually a period of months, not usually a year. The evidence filed by the applicant shows that the majority of references within the industry are to “gap year travel” not “gap travel”. I have no doubt that the former will be recognised by the majority of consumers. I am willing to accept that “gap travel” would be recognised by the majority of average consumers as well as the travel profession as relating to travel during a gap or gap year.”

Accordingly, Mr Malynicz submitted that the Hearing Officer concluded that the terms “gap year”, “gap” (in the context of travel) and “gap travel” would be understood by a majority of consumers as relating to a break between finishing school and starting university, or between finishing university and starting work. Since the Hearing Officer had reached the view that a majority of average consumers would recognise these terms as descriptive, it followed that a minority of average consumers, which could not, without further reasoning, be dismissed as an insignificant proportion, would not.

Mr Brandreth QC, on behalf of the applicant, disputed that these were the Hearing Officer’s findings in relation to the meaning of “gap” in the context of travel. He submitted that the Hearing Officer had accepted the evidence of Mr Stitt that the context of travel the word “gap” refers to “a type of trip which is considered a break from the normal existence of the individual taking the gap”. It was not confined to a break between finishing school and starting at university, or between finishing at university and starting work, which were merely typical examples.

Mr Brandreth contended that the fallacy in the opponent’s approach was to isolate paragraph [34] from the rest of the Decision and thus to deprive it of context. Paragraph [34] was concerned only with whether “gap travel” as well as “gap year travel” had a descriptive meaning. He pointed to paragraphs [7] and [18] where the Hearing Officer summarised and commented on the applicant’s evidence. He also referred to paragraph [19] where the Hearing Officer identified the average consumer as the general public and rejected the contention that he/she should be limited to 18-24-year olds.

Mr Brandreth then focused on paragraph [35] where the Hearing Officer said:

“The applicants’ mark has two elements “Gap” and “360” neither of which are descriptive of the applicants’ services in classes 35 and 39, which are not subject to any limitation. However, when used on the services in classes 36 and 41, which are limited to services “all relating to gap travel”, the word “gap” has a low level of distinctiveness. In respect of the “360” element the opponent contended that this element will be seen as meaning

“full coverage”. However, no evidence has been adduced in relation to this, and to my mind the term is distinctive of services relating to gap travel”

Mr Brandreth observed that in that paragraph the Hearing Officer stated that neither “gap” nor “360” is descriptive of the applicant’s services in classes 35 and 39. Then he contrasted that position for classes 36 and 41 by saying that for those services, “which are limited to services “all relating to gap travel”, the word “gap” has a low level of distinctiveness.” That conclusion, both by its contrast with the finding in relation to classes 35 and 39, and by the discussion of the meaning of “gap travel” in [34], indicated that the Hearing Officer held that “gap” is descriptive of a certain kind of travel and, consequently, of a certain kind of service addressing that kind of travel.

Finally, Mr Brandreth laid particular stress on the passage emphasised below in paragraph [36] of the Decision:

“There are clear visual and aural similarities between the marks in that they both have the word “GAP”. But given the low level of distinctiveness of that word when used for services relating to gap travel, this similarity is outweighed by the difference created by the presence of the “360” element in the applicant’s mark. Conceptually, the word “gap” has a meaning in relation to the class 36 and 41 services of a break. It might have the same meaning in the opponent’s unlimited specifications in classes 36 & 41. The term “360” may be seen as a reference to a circle or globe which alludes to travel but is distinctive.” (emphasis added)

Reference to the meaning of “gap” in relation the class 36 and 41 services as “a break” was, according to the applicant, an express acceptance of its case, as set out in Mr Stitt’s evidence.

In my judgment, the opponent is correct in respect of this issue. I have reached this conclusion for the following reasons. First, the issue of whether the words “gap year”, “gap travel” and “gap” in the context of travel services were descriptive was a key dispute between the parties, and the entire reasoning of the Hearing Officer in support

In summary the Hearing Officer, having considered the evidence of the applicant, concluded that:

This appeal is unusual, in that both sides identified and relied upon the same error of principle in the Decision.

The alleged error of principle identified by the parties was as follows. The specifications of the Earlier Marks are broader than the specifications of the Application. The broader specifications encompass the narrower. Therefore, the Earlier Marks contain within them, notionally, the words “all relating to gap travel”. As Mr Brandreth put it, the Earlier Marks cover a super-set which includes gap travel. Accordingly, the same result should have been reached in relation to the class 35 and 39 services as for the class 36 and 41 services. Whilst the parties differed fundamentally on what that result should be, they both contended that a “judgment of Solomon” whereby the Opposition was partially successful, was not possible in the present case. According to the opponent, the Hearing Officer ought to have accepted the Opposition under s.5(2) in its entirety. According to the applicant, he ought to have rejected the Opposition in its entirety.

Although the parties were agreed that the Hearing Officer made an error of principle, it does not necessarily follow that the court will accept this. Where both sides are appealing, it may suit their respective cases to identify an error of principle when no such error exists; in the present case, each side seeks complete victory. Therefore, it is necessary carefully to consider the Decision, and to assess whether the criticism of the parties is justified.

The Hearing Officer set out the specifications of the Application at [12] of the Decision.

The specifications of the Earlier Marks are very long and are set out by the Hearing Officer at paragraph [3] of the Decision, in tabular form. It is unnecessary to reproduce them in this judgment as I am satisfied that specifications of the Earlier Marks are of broad scope and encompass “gap travel”. Indeed, the Hearing Officer recognised that this was the case at paragraph [24] of the Decision, where he said that:

“The applicant accepted that “Except in relation to certain of the services in class 35 as set out in more detail below the Applicant acknowledges that the service coverage is at least similar to the service coverage of the application.” I have set out the services of both parties in Annex 1. Even if the limitation “all relating to gap travel” makes any difference, it cannot affect the identity of the services because the opponent’s specifications are unlimited and therefore cover services relating to “gap travel” too.” (emphasis added)

When assessing the likelihood of confusion, the Hearing Officer needed to consider notional use of the Earlier Trade Marks and of the Application, across the full range of their specifications of services: see Maier v Asos [2015] FSR 20, per Kitchin LJ at [78]. Since the Hearing Officer concluded, correctly, at [24] of the Decision that the opponent’s specifications were “unlimited” and therefore covered services relating to “gap travel”, it was, in my judgment, an error of principle to conclude that the presence of the words “all relating to gap travel” in the class 35 and 41 specifications of the application meant that there was no likelihood of confusion, whereas the absence of those words in the class 36 and 39 specifications meant that there was a likelihood of confusion.

Mr Brandreth contended that the existence of this error of principle did not mean that it would be justified to interfere with the Hearing Officer’s finding that the word “gap” has a low level of distinctiveness. I accept this, but the question remains whether the Hearing Officer was entitled to come to that conclusion on the evidence before him, and whether his conclusion was sufficient to dispose of the issues before him. I shall consider those questions later in this judgment. However, the error of principle identified above means that I must reconsider the Hearing Officers’ findings of likelihood of confusion at [39] – [41], which were integrally linked with, and a direct result of, the error of principle.

Mr Malynicz contended that there was no proper evidential basis for this finding, and neither party contended for the limited meaning of “gap” in the context of travel that the Hearing Officer arrived at. In particular, at paragraph [15] of his statement, Mr Stitt said that “in the context of travel, the word gap refers to a type of trip which is considered a break from the normal existence of the individual taking the gap”. At paragraph [17], Mr Stitt said that “gap” means “a trip abroad taken as a break from normal life”.

In the light of this evidence, Mr Malynicz argued that the applicant’s position was that the term was not confined to travel during a gap year (i.e. the period between school and university) or a “gap” (a shorter period between university and work), but merely that it was a “break from normal life” whenever that occurred. Moreover, the applicant’s evidence (for example: page 403 of Exhibit DS6) referred to large numbers of “career breakers”, and retired people being targeted as customers by companies offering what the applicant described as “gap travel”. Therefore, the applicant’s evidence did not support the conclusion that the word “gap” was confined to use solely for travel during the period between school and university or between university and work.

In addition, the opponent did not contend that the term “gap”, in the context of travel, was confined to those taking a break during the period between school and university or between university and work. The opponent contended that its meaning was much less certain and more ill-defined than that set out by the Hearing Officer.

In my judgment the Hearing Officer was entitled to conclude that the majority of average consumers would understand the words “gap year”, “gap travel” and “gap” in the way that he set out at paragraph [34] of the Decision. His careful analysis of the evidence supported these conclusions. There was a stronger case as to the meaning of “gap year” than “gap travel” or “gap” in the context of travel, as these latter expressions were generally used as a form of shorthand, after initial reference to a gap year. This was reflected in the language used by the Hearing Officer at [34]. I reject the suggestion, which necessarily formed part of the opponent’s submission, under this ground of appeal, that no reasonable tribunal could have reached these conclusions.

That does not, however, dispose of this ground of appeal. The Hearing Officer’s conclusions dealt only with the understanding of the majority of average consumers. He did not deal with the understanding of the minority of average consumers, nor provide any justification for the conclusion that such minority could be regarded as an insignificant proportion of the total population of average consumers.

Mr Malynicz submitted, and I agree, that in order to determine the issues in the opposition, which remain relevant on appeal, it is necessary to consider the understanding, not just of the majority, but of any significant proportion of average consumers. Since the Hearing Officer made no findings in this respect, it is necessary for me to consider the evidence that was before the Hearing Officer and make the necessary findings. Since there was no oral evidence and no cross-examination at first instance, this presents no real difficulty.

In my view, a significant proportion of average consumers would consider that the words “gap travel” and “gap” when used in the context of travel, is not limited to those taking a break during the period between school and university or between university and work. Such consumers would also understand those words to include travel services offered to persons taking a career break, spending a redundancy payment, or enjoying their retirement. In my judgment, whilst “gap travel” might typically be undertaken by those travelling for longer than a two-week holiday, it would not be understood by a significant proportion of average consumers as limited to a trip of any particular duration, nor to any particular destination, nor for any limited purpose.

This is reflected in the Gap Year Guidebook 2015, exhibited as DS7 to the witness statement of Mr Stitt. This publication contains the following explanation at page 14, which is consistent with Mr Stitt’s evidence:

“Don’t think your break would have to be for a year either – it could be as long and short as you like or can afford!

But the one thing all such trips have in common is the fact that they’re all about taking time out of the normal routine to do something different, challenging, fulfilling, memorable – so that is our definition of a gap.

It’s difficult to give exact numbers because of the wildly different ways you can spend your gap, but we are likely to be talking hundreds of thousands – that includes young people (teenagers and those in their early 20s) career breakers and retired people.

The Year Out Group, which represents 34 of the leading gap-year providers in the

UK, arranged structured gap year placements for just under 30,000 people in more

than 19 countries in 2013 (the last full year of figures at time of going to press). They say that 75% of those gappers were aged between 18 and 24, predominantly taking time between school university or leaving university and taking up full-time work and about 20% were between 25 and 40, taking a sabbatical or career break or looking for a change of career.

‘There is no longer a typical age’, says Ellen Sziede at the African Conservation Experience. ‘There are still a lot of students joining us, but there are also more and more adult gappers, active retirees, parent and teenager teams. It’s not uncommon at all to have volunteers in their 20s, 40s and 60s mixing with teenage gap year students of the project and it’s all part of the experience’…

So the answer is people of all ages, all walks of life, able-bodied and disabled go on a gap.”

term “gap” to be a reference to “gap year” that would not be sufficient as a matter of law to avoid a finding of a likelihood of confusion. He contended that under section 5(2) of the Trade Marks Act 1994, an earlier right holder only has to show that a substantial proportion of the relevant public (e.g. those to whom the earlier mark is distinctive of origin and not descriptive of a characteristic) are confused.