29 JUN 2011: After years of fighting, Canada’s G.A.P. Adventures, has lost a trademark infringement suit brought against it by clothing retailer The Gap Inc. A New York federal judge has ruled that the Canadian company must change its name and logo in the US by September 1.

District Judge Alvin K. Hellerstein however, found in favour of G.A.P. on two claims of trademark dilution, saying The Gap had not proven that its extremely strong brand had been diluted or blurred in any way. Also dismissed were two other claims, one for unfair competition and one for common law trademark infringement.

G.A.P. was founded in Canada in 1990, 21 years after The Gap's first store opened. The popular travel company, which operates adventure and sustainable tours around the world, was quoted as having shown $87.3 million in revenue in 2006.

The Gap sued in October 2007, just after G.A.P. opened its first US store in New York.

The GAP claimed that G.A.P. purposely used its name to confuse customers and boost its business, and asked the court to grant a permanent injunction barring the use of the name. The US company also asked for unspecified damages, including compensatory and punitive damages, plus any profits G.A.P. may have made off the name.

G.A.P. denied the allegations and countersued, asking the court to dismiss The Gap's claims and declare that G.A.P. has “superior rights” to the trademark for travel-related services.

During a bench trial in March, G.A.P. founder Bruce Poon Tip claimed that he didn't know about The Gap's trademark and didn't expect people to make an association between the two.

However, company co-founder, Anita Voth, who left the company in 1998 in a financial dispute with Poon Tip, testified that he had said it “wouldn't hurt” to have such an association.

Judge Hellerstein found that Poon Tip “intended to create an association with Gap” and “acted to strengthen that association over time.”

The judge has given G.A.P until September 1 to transition to a new name in the US. Until then the company must instruct its employees not to use the word "gap" when referring to the company.

Lawyers for the parties declined comment to the media on Monday.

email icon facebook logo twitter logo
comments powered by Disqus