Knowledge & News

Liverpool FC’s unsuccessful trade mark application – is there no home-field advantage?

19 December 2019

Liverpool FC’s trade mark applications for the word “Liverpool” have been unsuccessful. The applications themselves were met with some criticism from their fan base. Liverpool Mayor, Joe Anderson (incidentally an Everton supporter) was also critical of the applications and tweeted: “I do not believe you can trade mark a city name”. In this article, we explore whether Mr Anderson is correct in this assessment.
 
The default position for UK trade marks is that a mark, which amongst other things, consists exclusively of signs/indications designating geographical origin shall not be registered. However, there is an exception to this absolute ground for refusal when the applicant can show that the mark has acquired a distinctive character as a result of its use before the date of the application. In making its assessment as to whether a mark has acquired distinctiveness, the UKIPO takes into account a number of factors (e.g. market share, intensity and duration of use) to determine the presumed expectation of average consumers when seeing the mark in relation to the categories of products applied for. Mere recognition or association on the part of consumers is not enough; consumers must rely on the mark as indicating the origin of the goods.  So, for example, as one of Liverpool FC’s applications covered football boots, the UKIPO examiner will have considered whether average consumers seeing the word “Liverpool” on a pair of football boots would rely on the word as indicating that the boots have been manufactured by, or in association with, Liverpool FC.
 
Liverpool FC’s applications covered a variety of goods but were relatively narrow in scope in that the goods related to football or the club. Indeed, in line with the scope of the applications, Liverpool FC put out a statement that their applications were intended to protect the club and supporters “from those benefiting from inauthentic products”. The strength of a trade mark for a club’s name when used to combat the selling of unofficial goods is well established in English law. The famous case of Arsenal v Reed involved a street trader selling unofficial Arsenal FC merchandise. It was argued by the trader that the mark was not being used to indicate origin but to indicate support for Arsenal FC. While the merits of the argument were recognised, ultimately it was held by the Court of Appeal that the street trader was infringing the trade mark.
 
Despite the media coverage surrounding Liverpool FC’s applications, it is not unusual for a football club to attempt to trade mark a geographical location which has become synonymous with their club. For example, there is a UK trade mark currently on the register for the word mark “Tottenham”. This was granted in 2004 and covers a wide variety of goods including clothing, without any limitation that such clothing must relate to football. Conversely, Chelsea FC, in 2016 was granted a registered trade mark for “Chelsea” but only in relation to clothes “relating to and/or bearing indicia of Chelsea Football Club”. The Chelsea mark is only slightly narrower in scope than Liverpool FC’s applications but substantially narrower than the Tottenham mark. Notably, neither of the two big Manchester clubs have attempted to register “Manchester”; perhaps recognising the difficulty they may face in proving acquired distinctiveness. Manchester United FC own a registered trade mark for “Manchester United”; and Manchester City FC have registered trade marks for “Manchester City FC” and “Man City” but no application has been made for “Manchester City” which would arguably be akin to a trade mark application for a city name. As noted above, Arsenal, the only one of the big six English football clubs to not be named after a location, has had significant success in combatting unauthorised street traders with their registered trade mark for “Arsenal”.
 
The concerns of Liverpool’s Mayor are perhaps understandable because the variety of goods and services applied for by Liverpool FC was reasonably broad and included, for example, entertainment in the nature of football games. Further, lower league clubs such as AFC Liverpool, and City of Liverpool FC may have been concerned about infringement risk simply by going about their ordinary business. Of course, some of these concerns may have been addressed if Liverpool FC had amended their application to be in line with the Chelsea mark i.e. the goods and services must relate to the club rather than football in general.
The Tottenham mark is perhaps the most worrying for third parties in that it is extremely broad and not limited to either Tottenham Hotspur FC or the sport of football. By way of example, the club owns the trade mark for the word “Tottenham” as applied to coffee – a coffee shop based in Tottenham called “Tottenham Coffee” could find themselves being accused of trade mark infringement even if they had no interest in football or the well-known club. Although in this situation, it may be possible for such a café to deploy a number of defences. For example, under the Trade Mark Act, a trade mark is not infringed by the use of, amongst other things, a sign which indicates the geographical origin of the goods or services provided the use is in accordance with honest practices in industrial or commercial matters.
 
Further concerns come from supporters’ groups, such as the Spirit of Shankly who believe that the name of the club belongs to the people of the city of Liverpool rather than a corporate entity. Indeed, the creation, buying and selling of clothing and merchandise bearing the name of their favourite team is seen by many to be part of the football experience and something many fans hold dear. In an age where the cost of football is criticised in some quarters, the prospect of seeking to prevent a street trader selling “Liverpool” branded clothing is unlikely to be palatable to some supporters. Of course, these concerns must be balanced against the need to protect the brand particularly from counterfeiters who free-ride on the success of the club.
 
In essence, contrary to Mr Anderson’s statement, a city or place name can in theory be the subject of registered trade mark protection; but much will depend on whether there is acquired distinctiveness. However, the scope of any granted mark in terms of goods/services covered might well be limited. Based on a review of the register as detailed above, the approach taken by the UKIPO to place names appears to have become stricter in recent years. Indeed, it has been reported that Liverpool FC’s application was unsuccessful due to the city’s “geographical significance”. Given this, clubs may decide to focus on promoting and protecting their nicknames (e.g. Spurs, Citizens etc.). The benefit being that such nicknames rarely include geographical locations and so a broader scope of trade mark protection may be possible. Moreover, a heavily promoted and used nickname is more likely to be used by counterfeiters and so registered protection to deter them is important.
 
In an interesting development, on 16 October 2019 L’Oréal applied for the word mark Liverpool in relation to hair care products. This application has been published but has not generated much public debate. It will be interesting to see whether the examiner takes a similar view as to the geographical significance of the city in this context.

Authors

Tom Taylor

Tom Taylor Associate London (UK) Solicitor (UK)

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