News & Insights

You’re never fully dressed without a registered trade mark – a lesson Clothing the Gap came to realise after a two-year trade mark dispute with US retail giant Gap (ITM) Inc.

shopping for a trade mark

In 2018, Clothing the Gap (an Aboriginal owned social enterprise supporting indigenous communities) filed trade mark applications for its name and logo, depicted below (Clothing the Gap Applications). The Clothing the Gap Applications claimed class 25 for clothing to protect the business’ merchandise, the sales of which are used to support Clothing the Gap’s foundation.

The name “Clothing the Gap” is a play on words, referencing the “Closing the Gap” indigenous health initiative which focuses on closing the gap between Australian and First Nation people.

un-suit-able: gap opposes the applications

The trade marks were advertised for acceptance on 11 February 2019. These trade mark applications caught the attention of Gap, who opposed the trade mark registrations over the use of the word “gap” in the name.  In its Statement of Grounds and Particulars, Gap relied on sections 44, 60 and 62A of the Trade Marks Act 1995 as grounds of opposition.

In its submissions, Gap referred to its earlier Australian trade mark registrations for “GAP” (for advertising and retail services) and the stylised logo represented below (for clothing, advertising, and retail services) (Gap Marks).

gap comes out on top

In November 2020, the IP Australia Hearing Officer found that the Clothing the Gap Applications were deceptively similar to the Gap Marks. In particular, the Hearing Officer determined that the additional words “CLOTHING THE” were wholly descriptive of the goods and therefore not an essential feature or dominative cognitive clue of the Clothing the Gap Applications.  Further, Gap owns a series of other marks such as “BABY GAP” and “GAP KIDS”, which increased the likelihood of confusion as consumers may consider “CLOTHING THE GAP” has the same trade origin.

The Hearing Officer concluded that given the common suffix, the Clothing the Gap Applications resembled the Gap Marks in such a way that would likely deceive or cause confusion among consumers. Accordingly, Gap’s opposition to the Clothing the Gap Applications was successful.

a costume change

During negotiations following the decision, Gap responded positively to Clothing the Gap’s proposal to rebrand to “Clothing the Gaps”.  This allows Clothing the Gap to retain much of its brand identity rather than needing to select an entirely new name, the latter of which is more usual in trade mark disputes over similar names.

fill the gap(s) in your trade mark portfolio

When selecting trade marks, businesses should keep in mind the descriptive elements of their brand(s), as this can play into whether a mark is deemed deceptively similar to another. Engaging trade mark lawyers early on in brand development is important to ensure that the chosen trade mark is registrable and unlikely to infringe on another trade mark. Undertaking trade mark clearance searches, as well as common law searches of the proposed mark, will ensure that businesses have greater certainty that the mark they are selecting is unlikely to face an objection in the future.

If you are in the process of starting a new brand or looking to register a trade mark you already use, speak to our Intellectual Property team to ensure your mark is registrable and not at risk of a trade mark opposition or infringement action.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.