Author: Amber Spong

The latest chapter in the “MIND THE GAP” trade mark battle.

The phrase “Mind the Gap” is a registered trade mark of Transport for London (TfL). Used to warn passengers about the gap between the train and platform, the phrase is announced over the speakers of the trains, spoken verbally by the staff at the platforms, and used in graphics such as the London Underground sign and the Tube map.

GAP Inc. (GAP) recently challenged TfL’s efforts to register the phrase for specific goods, invoking a settlement agreement from nearly two decades ago.

The Background
Over the last 50 years, “Mind The Gap” has become synonymous with London’s transport system. TfL has now capitalised on this popularity by selling branded merchandise, ranging from t-shirts to tote bags.

In 2021, TFL applied to trade mark the phrase for use on a variety of goods, including classes 9 and 18, on products such as eyewear, luggage, wallets, and purses. However, clothing retailer Gap Inc. opposed the application, arguing that it would be confusingly similar to their own "GAP" marks.

The Dispute
GAP’s opposition focused on five key legal grounds, including bad faith, likelihood of confusion, and unfair advantage. The tribunal’s decision largely revolved around two critical issues:

1. Bad Faith
GAP argued that TfL’s application breached the 2004 settlement agreement, which explicitly restricted the registration of “Mind The Gap” for use on “clothing accessories.” While the UKIPO dismissed GAP’s opposition and allowed the application, GAP was partially successful in its bad faith claim. The UKIPO found that Tfl’s application was made in bad faith in relation to various goods as it was inconsistent with honest practices given the existence of the settlement agreement. Ultimately though, the UKIPO found that Tfl did not breach the settlement agreement as certain goods contained within their application fell outside the scope of “clothing accessories” and, therefore, were not covered by the agreement.

2. Likelihood of Confusion and Reputation
GAP also claimed that allowing the application to proceed would create a likelihood of confusion between Tfl’s “MIND THE GAP” and Gap’s earlier trademarks in the minds of the average consumer. The tribunal rejected this argument. The UKIPO found that the two marks shared only low-to-medium visual and aural similarities, with no significant conceptual overlap. TfL’s association with public safety messaging and the iconic nature of the phrase ensured that consumers would not confuse it with GAP’s brand.

The Outcome
The outcome of the "Mind the Gap" lawsuit between Transport for London and Gap Inc. was a partial win for both sides. TfL was allowed to trade mark "Mind the Gap" for most items they applied for, but the UKIPO rejected TfL’s application for items covered by the 2004 settlement agreement, including wallets, purses, and cardholders.

Broader Implications
This case highlights the complexities of trade mark disputes involving long-standing agreements and widely recognised phrases.

TfL’s experience serves as a reminder that trade mark strategies require careful consideration of past agreements. As intellectual property disputes grow increasingly complex, organisations must move forward with their branding ambitions whilst simultaneously honouring prior agreements to avoid acting in bad faith.

About Brandsmiths
Whether defending an iconic slogan or exploring new branding opportunities, businesses should aim to secure their trade marks without compromising on legal or ethical obligations. Brandsmiths specialises in all matters related to trade marks, copyright, designs, patents, confidential information, and database rights.

If you would like to discuss trade mark protection in more detail, please get in touch.