You’ll Never Trade Mark Alone… or With Anyone Else: Liverpool Football Club fails in bid to register city name as a trade mark

October 11, 2019

2 min read

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What's going on here?

The Intellectual Property Office (IPO) has rejected Liverpool FCs bid to register the city name, “Liverpool”, as a trade mark with regards to sport products and services.

What does this mean?

The bid was rejected on the basis that Liverpool as a city was considered to be geographically significant. This is in contrast with other place names which have been successfully trade marked, such as Chelsea and Southampton. The decision was described by lawyers as “not entirely surprising” as the trade mark of a prominent geographical location such as this would prevent other traders located in the same area from showing the origin of their own goods. The move to register the trade mark had sparked anger among local clubs and businesses in Liverpool who would have had to cease to use the name, seek expensive legal advice, or licenses, had the bid been successful.

The rejection of the bid means that the premier league club will not have a monopoly over the name with regards to sporting goods and services. Thus, other clubs and traders will be able to continue to use the name without risking legal action.

While Liverpool FC has graciously accepted the IPO’s decision, it is not likely to be welcome news for them considering that the bid was made with the intention of stopping counterfeits and unofficial merchandise sales.

What's the big picture effect?

The action raises interesting thoughts on the debate around intellectual property and large companies that use prominent locations or objects as their brand. Even if legal action is not always successful, those companies will seek to protect their brand through other means. Indeed, Liverpool FC has stated that despite not registering the “Liverpool” trademark successfully, it will be taking action against large scale operations which seek to take advantage of the club’s intellectual property.

Intellectual Property lawyers should therefore be prepared for action taking place against counterfeiters. This action could arise through either the tort of “passing off”, unregistered design rights, or infringement of players image rights, depending on the nature of the product. Although, it should be noted that these types of action have been available to the club for years and have not been used before to any great extent.

The decision consolidates the law in the area with regards to descriptive trade marks and geographical locations in particular. The current law requires that a consumer associate the word “Liverpool” with the football club before association with the geographical place in order for it to be successfully trade marked.

The football club may have been more successful in their application should they have applied for the combination of “Liverpool FC” rather than purely “Liverpool” (the club has already registered trade marks for the variants  “Liverpool football club”, and “LFC” but not apparently “Liverpool FC”).

Overall the decision may force traders to consider the wider community effect of trade marks before submitting an application, and may force them to pursue other means of intellectual property protection as an alternative.

Report written by Julie Lawford

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