Re: Opposition by Gap (ITM) Inc. to registration of trade mark applications number 1946704 (class 25) - Clothing the Gap (Plain Words) and number 1988866 (Class 25) - Clothing the Gap (Fancy) in the name of..

This matter concerned oppositions by Gap (ITM) Inc. to two trade mark applications, numbers 1946704 and 1988866, both in Class 25, for the marks "Clothing the Gap" (Plain Words) and "Clothing the Gap" (Fancy) respectively, filed by an applicant described as an indigenous entity. The oppositions were heard by Hearing Officer Kate Doherty.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark applications should be rejected pursuant to section 44 of the *Trade Marks Act 1995* (Cth). This ground of opposition requires the applicant's mark to be substantially identical with or deceptively similar to a registered trade mark, and for the priority date of the applicant's mark not to be earlier than the priority date of the registered mark, unless exceptions for honest concurrent use or continuous use apply. The opponent also pursued grounds under sections 60 and 62A, but these were not established.

The Hearing Officer found that the applicant's marks were deceptively similar to the opponent's registered trade marks. Crucially, the Hearing Officer determined that the applicant had not demonstrated continuous use of its trade marks prior to the priority date of the opponent's marks, nor had it established honest concurrent use or other circumstances that would justify registration. Consequently, the ground of opposition under section 44 was established for both applications.

As a result, the Hearing Officer ordered that trade mark applications numbers 1946704 and 1988866 would not proceed to registration. The applicant was also directed to pay the opponent's costs, with the scale of costs for the second application being apportioned at 20% due to the concurrent hearing and shared evidence.