Liverpool Football Club (“LFC“) have been unsuccessful in their attempts to register two trade marks for the word LIVERPOOL. LFC withdrew both applications after the UK Intellectual Property Office (“IPO”) refused the registration. While the IPO’s decision has not been published, it would seem that the IPO rejected LFC’s applications on the basis that such marks would consist exclusively of indicia of geographical origin.

Protection by registration

LFC sought to register trade marks for LIVERPOOL in classes 9, 16, 25, 28, 35, 38, 41 and 43. If granted, this would have entitled the club to prevent third parties using the word LIVERPOOL for certain types of goods and services found under these classes. For example:

• Class 16 covers printed matter, including calendars and posters.

• Class 35 covers stationery, clothing, footballs and replica football kits.

• Class 41 covers the provision of sporting activities, including branded training camps.

In pursuing trade mark registrations for LIVERPOOL, LFC intended to equip itself with an additional tool to prevent third parties from producing merchandise falling within the types of goods/services specified, using the LIVERPOOL word mark, without LFC’s consent. Presumably LFC’s aim was to ensure that its fans would not be purchasing LFC branded goods or services from unauthorised third parties, guaranteeing the quality and origin of the goods/services.

Whilst other football clubs have been successful in registering their borough or town as a trade mark (e.g. Tottenham), the IPO would not permit the registration of LIVERPOOL due to the “geographical significance” of Liverpool as a city in comparison to other place names, according to an LFC statement. In essence, Liverpool, as a city, is known for more than just Liverpool Football Club.

Other forms of protection

Despite being unsuccessful in its attempts to register trade marks for the word LIVERPOOL, LFC still have a number of options when it comes to tackling sellers of infringing merchandise. LFC has a portfolio of registered trade marks, including a word mark for LIVERPOOL FOOTBALL CLUB, which it has been successful in registering. LFC could take action against persons who infringe its rights in this respect. Indeed, LFC’s existing marks would appear to provide it with a significant degree of protection.

In addition to relying on its existing registered rights, LFC could pursue claims against third parties who use its brand and reputation to sell inauthentic goods. Such claims would be brought under the common law, through the tort of passing off. While it is simpler to bring a claim for infringement of a registered trade mark when it comes to counterfeit goods, passing-off provides LFC with an additional or alternative cause of action.

Passing-off is a cause of action rooted in the principle that “a man is not to sell his own goods under the pretence that they are goods of another man” (Perry v Truefitt (1842) 5 Beav.). A successful action for passing off requires a claimant to establish:

• a goodwill or reputation attached to the goods or services;

• a misrepresentation by the defendant to the public (whether intentional or not) leading or likely to lead the public to believe the goods or services offered by him are the goods or services of the claimant; and

• damage to the claimant, by reason of the mistaken belief, based on the defendant’s misrepresentation that the defendant’s goods/services are derived from the claimant.

As one of the most historic and decorated clubs in Europe, LFC would likely be able to satisfy the first component of the test with relative ease. The club has a strong global reputation and extensive goodwill with a dedicated and committed fan base in the UK and beyond.

Counterfeit goods (such as stationery or kits) branded with LFC marks are likely to mislead the public as to the origin and authenticity of the goods. The public may not know that a supplier or vendor is unlicensed and may believe their goods to be legitimate products.

LFC would likely be able to satisfy the final component of the test as well. The sale of counterfeit goods diverts sales away from its official club stores that sell legitimate and authentic LFC goods, thereby causing LFC to lose money.

Registered trade marks provide LFC with a simple mechanism to tackle the sale of counterfeit goods to the public. However, it still has a realistic chance of successfully preventing unlicensed vendors from selling counterfeit merchandise under the tort of passing-off.

Infringers beware

Since withdrawing its applications for the LIVERPOOL word mark, LFC have issued a warning to vendors who might have been encouraged to sell infringing merchandise by the withdrawals. In a club statement, LFC said: “We will, however, continue to aggressively pursue those large-scale operations which seek to illegally exploit our intellectual property and would urge the relevant authorities to take decisive action against such criminal activity wherever it exists.” It would appear then, that LFC will continue to take a robust approach to defending its existing registered and unregistered intellectual property rights.