Liverpool FC fail to register “LIVERPOOL” trade mark alone

What should businesses consider when attempting to register a place name as a trade mark?

The key takeaway

Characteristics of the trade mark, such as being distinct and stylised, as well as the categories the trade mark will cover, may contribute to a successful application to register a trade mark that has geographical significance. 

The background

Liverpool Football Club (LFC) filed an application to register the trade mark “LIVERPOOL” at the Intellectual Property Office of the United Kingdom (UKIPO) on 20 June 2019. The application was made in relation to a wide number of goods and services including toys, photographs, clothing and broadcasting services. LFC stated that the application was strictly to protect the club and supporters from buying counterfeit Liverpool FC products; a registered trade mark would make it easier to curb counterfeit merchandise products and protect their brand internationally. 

Shortly after LFC filed its original application, it was split into two separate applications. The first application (covering scientific apparatus, clothing, footwear, games and toys) is still under consideration. The second application, (covering office materials, business management services, telecommunication, education and services for providing food and drink) was refused by the
UKIPO in a high profile decision. 

The decision

Although LFC stressed that it wanted to register the name as a trade mark “only in the context of football products and services”, its application was unsuccessful. The UKIPO found that LFC could not monopolise the name “Liverpool” due to its “geographical significance” as a city. If the UKIPO had granted LFC the rights for the geographical location, it would have granted LFC sole use over the association with Liverpool (the city), and the capability to prevent anyone else’s use in this regard.

Interestingly, this application and subsequent resistance mirrors a similar dispute from over 10 years ago, when LFC overcame criticism from local politicians concerning their application to register a component of its crest; a depiction of the liver bird. Alfie Hincks, local businessman and supporter of rivals Everton Football Club, strongly opposed the application and, on the grounds that the liver bird was well recognized as an emblem of the city of Liverpool, filed an opposition to LFC’s trade mark registration. However, the arrangement of the trade mark, featuring both the liver bird as well as the name of the club and the iron gates of Anfield, meant that the trade mark was considered a distinct and stylised mark and therefore it was registered.

What has gone unnoticed by many is that the first application was approved for publication by the UKIPO, published on 8 August 2019 and remains pending. The application is still open for opposition and to date there have been over 100 notices of intended opposition filed. As mentioned above, the goods in this surviving application all fall into the “merchandising” category, which perhaps gives LFC a better chance at a successful registration, given that it would be more realistic to associate merchandising goods exclusively with LFC. For example, Southampton FC’s “SOUTHAMPTON” EU trade mark covers three almost identical classes so perhaps this is more of a promising position for LFC.

Why is this important?

The move is not unprecedented and other Premier League clubs such as Tottenham Hotspur Football Club and Chelsea Football Club have successfully managed to trade mark place names in relation to their commercial businesses. Essentially, clubs want to register marks across a wide variety of classes, with as wide-ranging specifications as possible in order to limit the number of counterfeit products and to cover different types of merchandising or sponsorship agreements. 

Any practical tips?

As LFC have done, businesses should consider making separate applications covering different categories of items. This way, it is possible that at least the narrower application might be approved. LFC’s contrasting fortunes in attempting to register “LIVERPOOL” and their successful attempt to register the liver bird highlight the importance of making the trade mark distinct and stylised (indeed Liverpool have successfully registered as a mark “Liverpool FC” and “Liverpool Football Club”).