Taking on the Gap: One Retailer’s Trademark Dispute

trademark disputeOn the face of it, the rules behind the use and protection of a trademark are obvious. Once a trademark is registered, other companies are prevented from using it as part of their branding, corporate, or marketing strategies.

But it doesn’t always work out that way. The truth is that trademark laws can be complicated. Take the case of Green the Gap, an Indian recycling company that creates accessories using junk, and Gap Inc., the billion-dollar U.S. clothing giant.

In March of 2013, the Indian company received a legal notice from Gap Inc. citing a breach of the company’s trademark. According to Gap Inc., by using the name “Green the Gap,” the Indian firm was infringing on the clothing company’s brand and using its identity to fuel its own sales.

The notice gave the Indian company 14 days to alter its name and remove any references to the word “Gap” or risk facing a legally enforced action. However, a month after the notice, Gap Inc. informed the other company that it could keep the name, but only for registration purposes—not for labeling their products or for use on their website.

Why Gap Is Furious

Gap Inc. now owns the rights to the word “Gap,” so an argument can be made that the company was acting within its rights to send the cease-and-desist notice. Under trademark laws, it is illegal to use the mark of another company in a confusingly similar manner to fuel the growth of your business. That’s why you can’t open a burger restaurant and call it “McDonald’s Choice.”

Trademark laws do not only prevent you from using the same mark; they also prevent you from using marks that may be similar. Therefore, if you opened a coffee shop and called it Starbox, Starbucks would have the right to challenge your name.

Gap’s argument can be made based on either policy—prohibiting identical marks or similar marks. With over 3,000 stores, there is little doubt that the Gap brand has become synonymous with clothing. That’s why representatives of the clothing store admitted to being “seriously concerned” about the use of its “well-known trademark” by the Indian company.

The Green Defense

However, the case isn’t as clear-cut as it might appear. In its counter-argument, Green the Gap pointed out that although they have only three stores in India, Gap Inc. has none.

As expected, Green the Gap has denied that its choice of name had anything to do with the clothing company. Instead, the company’s founder, Vimlendu Jha, pointed to a Swechna educational program called “Bridge the Gap” as the source of his inspiration. “I never had the desire to be Gap,” said Jha. “There is no comparison between us.”

Another factor in the Indian company’s favor is that Green the Gap offers a different service than Gap Inc. Gap is largely a clothing store. However, even though Green the Gap sells clothes occasionally through its website, there are no similarities to Gap Inc. in its manufacturing process, design concept, and customer base.

Jha also noted that the company’s primary focus is on promoting green initiatives, which is reflected in its name. “Our company is talking about changing lives of people and we’ve chosen upcycling [reusing materials that would otherwise go to the trash heap] to do that. The purpose is larger,” stated Jha. He pointed to “environmental conservation and livelihoods” as his company’s targets.

This is important, because Indian trademark law protects companies against the creation of “deceptively” similar marks between companies who share the same services. This is why you can sometimes have two companies sharing identical names if they offer unrelated products or services.

Gap has yet to respond to the claims made by Green the Gap. In the meantime, the Indian company has seized the moment by bringing its story into the news. Green the Gap is accusing Gap Inc. of using heavy-handed bullying tactics in its approach.

Speaking with AFP, a French news agency, Jha complained about the notice. “We were shocked and angered that a company of that size and stature and supposed respectability is getting threatened by a small business,” he stated.

India recently announced changes designed to make it easier for foreign companies to invest in the country. Jha sees the attack from Gap Inc. as a foreboding sign of what is to come.

Moving Forward

Reports from India suggest that Gap Inc. has plans to open a store there in the near future, which may be one of the reasons behind the suit. Then again, the legal action may simply be a proactive measure taken by the company to protect its brand.

Gap Inc.’s approach to the outcome of this case is likely to be affected by its corporate plans. If the company is hoping to expand into India, Gap Inc. will understandably be concerned about being perceived as a western bully out to destroy the local, thriving clothing industry. That kind of reputation could hinder its growth in India.

Regardless of the reason for Gap’s actions, it’s always best to deal with trademark infringements when you see them. As one of the most successful brands in the world, Gap Inc. has a duty to protect and preserve its identity.

This dispute is certainly an interesting case with compelling arguments on both sides. Although neither company has yet to comment on the outcome of the case, settlement talks are underway. It is likely that an agreement will be reached that will allow both companies to keep their names.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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