Liverpool Football Club have started the new season defending not just their European Champions League title, but their brand. Their game plan: to trademark a city’s name.

BACKGROUND

LFC’s application to register a trademark in “LIVERPOOL” was filed at the UK Intellectual Property Office on 20 June 2019. It was made in relation to three classes of goods from the International (Nice) Classification of Goods and Services: 9, 25 and 28. They have also applied for a number of other classes of goods and services (16, 35, 38, 41 and 43), and this is currently being examined by the UKIPO.

Though they only wish to register the mark in relation to football goods, many Liverpudlians object. Some are angry as they feel their city’s name is being taken and turned into a trade mark. Others are concerned about market traders who rely on selling LFC inspired merchandise. And Northern Premier League team, City of Liverpool Football Club, are worried that their use of LIVERPOOL could be frustrated.

LFC CEO Peter Moore met with some of those concerned stating “[w]e are trying to protect LFC against large-scale counterfeiting operations and are not in any way targeting small businesses and clubs […] We must protect the global revenues to reinvest in players and infrastructure”.

Market traders can take some comfort in the fact that they have traded for years without intervention from LFC, despite various items featuring LFC trademarks. (The LFC crest, YNWA and You’ll Never Walk Alone, for instance.) Many also feature LFC players. Unless they obtained the players’ permission, they are likely infringing the players’ image rights.

Trade Mark Number UK00001099121

Their trade likely gives rise to a cause of action in the tort of passing off, but LFC chooses to let them be. Those whom get into trouble are invariably counterfeiting official LFC merchandise (see the Hassan brothers and Eric Burt). Offering counterfeit goods for sale is a criminal offence and there is an obvious point of public policy in stopping it.

CLFC and other small clubs can take comfort in Moore’s offer to contract with them so that they can continue to use LIVERPOOL. But could this all be academic?

CAN A PLACE NAME BE PROTECTED BY A TRADE MARK

It is possible. Tottenham Hotspur registered TOTTENHAM and Liverpool registered ANFIELD, without opposition, unlike their efforts to trademark the Liver Bird. They made that application to the European Union’s Intellectual Property Office and ex-Liverpool City Councillor, businessman and Everton fan, Alfie Hincks, asked the EUIPO to declare it invalid.

EU trade Mark 008820292, the Liver Bird

The tribunal considered the Community Trade Mark Regulation (EC) 207/2009, transposed into the UK’s Trade Marks Act 1994, which may decide the fate of LFC’s LIVERPOOL mark. Articles 3(1)(b) and (c) are most likely to cause problems, with the former reading as follows:

Article 3 Absolute grounds for refusal

  1. The following shall not be registered:

(b) trade marks which are devoid of any distinctive character”.

The tribunal held at [38] that “distinctive character must be assessed […] by reference to the relevant goods and […] the perception of the relevant public” and at [39], there may be no distinctive character in the Liver Bird if it is commonly used in connection with other goods.

Proving that LIVERPOOL has a distinctive LFC character is a hard task. In the Liver Bird case, it was shown that the Bird took many forms and the particular one in question was distinctively LFC’s. The difference here is that the word LIVERPOOL only takes one form.

By narrowing the classes in which the mark will apply, LFC have helped themselves. They can argue that the relevant public are sports fans, or even just football fans, who will distinguish the mark as referring to LFC. LFC’s relative popularity to other Liverpool based brands, such as Liverpool Gin and even Everton, will also help.

It is also worth turning to Article 3(1)(c), which reads:

(c) trade marks which only indicate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods”.

This means that LFC will not be able to register LIVERPOOL unless they can show that the relevant public will perceive the mark to describe LFC’s activities, not simply the city as a place where trade goes on. This could be trickier than it was for the Liver Bird, for the same reason as 7(1)(b): LIVERPOOL is not distinctively LFC’s mark and it could be argued it is simply a reference to the city. Again, the perspective the decision maker will adopt is that of the relevant public and it is debatable exactly who that is.

MOVING FORWARD

There is some “fake news” about this application. This article states that the application was withdrawn. It has not been withdrawn. They may be confusing it with one made for “ALLEZ ALLEZ ALLEZ”, launched after a trader tried to register it, explains LFC’s Peter Moore. Once the trader withdrew the application, so too did Liverpool.

It also infers reasons for the Liver Bird application’s success that cannot be reasonably inferred from the decision itself. For instance, that the mark was deemed sufficiently distinctive because it was placed against other distinctly LFC things, like the gates of Anfield. In fact, the mark (depicted here) is a lone bird with a leaf in its mouth placed against a blank background.