Red card for Liverpool F.C.’s trade mark registration of “Liverpool”

Liverpool F.C. may have won the UEFA Champions League but in their recent head-to-head with the UK Intellectual Property Office they failed to register “Liverpool” as a trade mark for football-related products and services. The basis for the IPO’s decision was the “geographical significance” of the city of Liverpool.

A trade mark is an indication of the trade origin of goods and services. A trade mark must therefore relate to a particular supplier. It can become an indication of quality and reputation and is a piece of property that can be licensed.

In order to register a UK trade mark, a successful application has to be made to the UK Intellectual Property Office (or for European Union marks to the EUIPO). To be registerable, a mark must have certain qualities. For example, it should be distinctive and be able to be represented graphically. It should not be descriptive, deceptive or confusing.

UK and EU trade mark law prohibits registration of trade marks which consist exclusively of signs or indications that designate the geographical origin of goods or services. It is not necessary for goods to be manufactured in a particular geographical location in order for this prohibition to take effect. However, place names have been successfully applied for as trade marks, as it depends on the goods and services applied for. For example, Patagonia is a registered trade mark for the clothing brand Patagonia, Inc. despite being the name of a region of South America. It is also sometimes possible to obtain a registration on the basis of “acquired distinctiveness” if it can be shown that, through use of a mark as a trade mark over a period of time, the public has become educated that the mark is a badge of origin.

When deciding on the distinctiveness of a place name, the UK IPO’s guidelines require examiners to consider all relevant factors when assessing the potential for other traders to use the sign as a geographical designation. An examiner will take into consideration how well known the geographical location is, the goods and services with which the place is associated and other characteristics of the place including its size.

The application for the “Liverpool” trade mark was unpopular throughout the city. Liverpool F.C. said it was concerned about unauthorised products bearing the name of the club, but local football clubs expressed concerns over their own use of the city’s name for their teams and merchandise. The MP for Liverpool Walton, Dan Carden has welcomed the decision. The UKIPO has prevented the possibility of Liverpool F.C. enforcing against the use of “Liverpool” by independent traders and smaller football clubs.

All is not lost for Liverpool F.C.’s trade marks, as they have in their squad the words ”LIVERPOOL FC”, “LIVERPOOL FOOTBALL CLUB” and their emblem design, amongst a portfolio of others on the UK and EU registers.

In light of the decision against Liverpool, should other football clubs worry? Chelsea Football Club has successfully registered the word “Chelsea”, Tottenham Hotspur F.C. has “Tottenham” and Southampton F.C. “Southampton”. It will be interesting to see what other rival premiership team’s applications are successful.

The law and practice referred to in this article or webinar has been paraphrased or summarised. It might not be up-to-date with changes in the law and we do not guarantee the accuracy of any information provided at the time of reading. It should not be construed or relied upon as legal advice in relation to a specific set of circumstances.

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