Invictus is conquered

25th Aug 2022

O/448/22, Invictus Games Foundation v Invicta SpA: A royal connection wasn’t a convincer, writes Amelia Skelding.

O/448/22, Invictus Games Foundation v Invicta SpA, UK IPO, 24th May 2022: A royal connection wasn’t a convincer, writes Amelia Skelding

Key points

The beginnings of marks tend to have more emphasis than their endings
Marks can have a variety of different conceptual meanings
All evidence must relate to the specific mark at issue and the relevant goods/services

On 16th September 2019, Invicta SpA (the Opponent) filed an opposition against UK trade mark application No. 3399958 for INVICTUS (series of two) for clothing, footwear and headgear in class 25 in the name of Invictus Games Foundation (the Applicant).

The opposition was based on the EU designation of International Registration No. 1201001 for INVICTA in classes 9, 16, 25 and 35. The Opponent invoked s5(2)(b) of the Trade Marks Act 1994.

After a comparison of the goods and marks, the Applicant’s class 25 goods were found to be identical to the Opponent’s class 25 goods.

The Opponent’s mark is a plain word mark in capital letters. The Applicant’s mark is a

series of two, with INVICTUS being the only word element.

The colour variations were found to play a limited role, merely acting as a background.

Both marks share the identical first six letters – “INVICT” – differing only in their endings.

As the beginnings of marks tend to have more emphasis than their endings, the marks were found to be visually and aurally similar to a high degree.

Conceptual similarity

The Invictus Games Foundation oversees an international sporting event for wounded, injured and sick servicemen and servicewomen.

The Applicant argued that due to the fame of its founder – Prince Harry, Duke of Sussex – the mark INVICTUS for clothing, footwear and headgear would bring to mind the Applicant, royalty and/or wounded servicemen and servicewomen.

However, this argument was rejected because there was insufficient evidence that the general public had been educated accordingly.

In addition, the evidence related to INVICTUS GAMES, not INVICTUS solus, and there was no evidence of any sales relating to the relevant goods.

Therefore, any reputation held by the Applicant was not demonstrated to be held in the mark in suit and also was not shown to be for clothing, footwear and headgear.

The Opponent submitted that both INVICTUS and INVICTA are likely to be regarded as masculine and feminine forms of the Latin adjective having the stem “invict–”, meaning “unconquered”.

It was found that consumers who knew the Latin meaning would find the marks highly similar conceptually, if not identical. Where this meaning was not known or the terms were thought of as invented words, no comparison was possible and they would be conceptually neutral.

However, it was accepted that some consumers may perceive the mark as having an association with Invictus Games, but not a significant proportion.

Rare exception

As the goods were found to be identical and the marks were found to be visually and aurally highly similar, and conceptually highly similar, if not identical, or neutral, a likelihood of confusion was found and the opposition was successful in full.

This case looks at the rare exception where the notoriety of a famous person means the reputation of the later mark may come into play in the confusion assessment, albeit only for the conceptual comparison.

While settled case law focuses on the names of famous people, it would seem that there is an even higher bar for organisations.

Amelia Skelding is a Chartered Trade Mark Attorney and Trade Mark Associate at Keltie LLP.

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