Gap versus Green the Gap: A trademark fight worth fighting?

On March 1, Gap sent a legal notice to Green the Gap, an online retailer set up by a New Delhi-based NGO called Swechha, claiming it was taking undue advantage of Gap’s reputation and goodwill. It warned the company to stop using the word ‘Gap’ across stores, apparels and its website within two weeks.

“Our brands are among our most valuable assets and we have a global trademark protection programme in place,” Edie Kissko, a spokesperson for Gap, told Campaign Asia-Pacific in an email. “The letter in question was sent as part of that ongoing programme.” Kissko did not answer more detailed questions.

Green the Gap is putting up a fight. It says the origin and basis for the choice of the word ‘gap’ comes from the broader environmental initiatives of Swechha, an environmental organisation that started an educational programme called ‘Bridge the Gap’, which promotes environmentally responsible choices of consumption and production of everyday use products. Besides, the brand name ‘Green the Gap’ has a strong association with green and the use of the word ‘Gap’ is limited to its dictionary meaning signifying a ‘void’, the company has argued. Its logo also establishes a clear distinction from Gap. Denying the allegations, its founder Vimlendu Jha has replied to Gap’s notice saying that it will not change its name. Gap has not responded to Jha’s counter.

“Gap is a common noun and cannot be monopolised,” Jha told Campaign Asia-Pacific. Jha has urged Gap to reassess its unreasonable claims. “An international corporate house of Gap’s size and stature should encourage environmental initiatives like Green the Gap and not engage in trademark bullying to intimidate small businesses.”

Indeed, where Gap has an annual turnover of US$15.7 billion, Green the Gap’s is less than US$100,000. Still, Jha has support. His online petition started a few days ago has already garnered support from more than 600 people and his ‘Save the Gap’ Facebook page has 218 likes.

Green the Gap isn’t the only company Gap is targeting. In 2011, Gap took on Toronto-based adventure company Gap Adventures claiming their use of the word ‘gap’ was confusing consumers. Gap Adventures relented and changed its name to G Adventures. More recently, Gap sent a legal notice to a London-based social-networking site called Gapnote. Here, Gap demanded the company stop using the word ‘Gap’ and hand over its URL.

Brand experts are unanimously behind the NGO. They say 'gap' is a generic word, and generic words cannot be owned by any one entity.

“I think the key question here is not whether or not ‘Green the Gap’ represents willful infringement of Gap’s trademark, but why organisations with the scale and resources of Gap consistently fail to read the likely media response and consumer reaction,” said Graham Hitchmough, Brand Union’s regional director for Asean. Hitchmough added that there doesn’t appear to be any obvious passing off of Gap’s trademark in the identity or anywhere else on the Green the Gap website. “The heavy-handedness of Gap’s response seems to indicate a disconnect between the company’s legal machinery and brand marketing functions—a knee-jerk, by-the-book litigious reaction to an issue that could have been dealt with more sensitively.”

Harish Bijoor, who runs his own brand consultancy in India, agreed. “From the perspective of business size, this will definitely be seen as a case of Gap the Goliath bullying 'Green the Gap' the David,” he said.  “Consumer groups tend to support the Davids of the world, while corproate groups tend to support the Goliaths.”

Bijoor believes that on legal grounds the case will stand up. "It will hold fundamentally because Gap is a recognised brand name and has, by virtue of it being around for years, established a unique place it the minds of people," he said. "Keeping this in mind, anyone who uses it, either with a prefix, a suffix or in sentence form, will need to explain how they are not infringing into the territory of brand Gap." Brand names are part of the IP regime, and because brands are built with passion and deep investments, brand owners will definitely defend them from infringement or even perceived infringement. "At times, well-meaning brands need to pay the price as well," he said. 

"This case brings to mind similarly overbearing responses from Fedex, Monster and Chick-Fil-A in the US in 2011, which led to accusations of ‘trademark bullying’ against the ‘little guys’," Hitchmough said. "Unfortunately, it’s a sign of the times and the litigious, paranoid brand environment in which we now operate." He added that at the same time, the internet and social media have given smaller companies opportunities to benefit from the names and goodwill of famous brands, such as domain-squatting and intellectual property theft. "So perhaps it’s little surprise that the big boys are now in no mood to turn a blind eye to any perceived infringement. It’s just a shame that common sense and perspective are often the first victims."