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17th January 2020

Full Time: Intellectual Property Office 1-0 Liverpool: a lesson in “geographical significance”

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On 20 June 2019, Liverpool Football Club (Liverpool FC) filed an application at the Intellectual Property Office of the UK (IPO) to register the word ‘LIVERPOOL’ as a UK trade mark. The reigning European champions stressed that the motive for Application UK00003408413 (the 413 Application) was to restrict the production and sale of counterfeit merchandise and to subsequently protect its brand and fanbase on an international scale. In August, Liverpool FC divided the application in two, creating a separate Application UK00003418051 (the 051 Application) applying to printed matter, retail, telecommunications, education and the provision of food and drink, leaving the 413 Application to cover software, clothing, footwear, headgear, games, toys and playthings.

Both applications were met with a significant backlash from the people of Liverpool, however the move is perhaps unsurprising given that several of Liverpool FC’s Premier League rivals, such as Tottenham Hotspur, Chelsea and neighbours Everton, have successfully trade marked their names. Additionally, Liverpool FC boasts numerous other registered trade marks, including ‘YOU’LL NEVER WALK ALONE’, the title of the Gerry & The Pacemakers song which has become synonymous with the club, and more recently ‘LET’S TALK ABOUT SIX BABY’, a quote from manager Jurgen Klopp after winning the club’s sixth European Cup last season. This play on words relating to the 1990 hit by Salt-N-Pepa will undoubtedly become a key part of the club’s future marketing.

Unfortunately for Liverpool FC, the perhaps more speculative 051 Application was promptly rejected. Whilst intended to apply only in the context of football products and services, the ‘geographical significance’ of Liverpool as a city meant that the club could not lay sole claim to its name. The 413 Application did pass the IPO’s initial examination stage, but upon encountering fierce public opposition the club opted to voluntarily withdraw the application, admitting that whilst made in ‘very good faith’ it had ‘underestimated the emotional reaction’.

The respective rejection and withdrawal of these applications contrasts sharply to the club’s 2010 application to register its emblem, the Liver Bird, as a UK trade mark. Similarly, this application received strong opposition owing to the bird being widely-regarded as the symbol of the city. However, what separated this from the 2019 applications was the inclusion of the name of Liverpool FC and a depiction of the iron gates of its world-famous stadium, Anfield. Together with the Liver Bird, this produced a distinctive mark solely associated with Liverpool FC.

Registering trade marks made up solely of place names is far more complex. ‘TOTTENHAM’, registered in 2002 by Tottenham Hotspur, was deemed ‘not the name of a locality that would naturally lend itself to being seen as an indicator of geographical origin’. The key difference here is that Tottenham as a locality is well-known for its football club – in most contexts, when you think of ‘Tottenham’, Tottenham Hotspur is what springs to mind. Liverpool meanwhile is a world-famous port city with a population of 2.24 million, renowned for its part in the industrial revolution and being home to legendary musicians including the Beatles. It is therefore famous in a way which Tottenham, for example, is not.

In principle, the names of well-known places such as Liverpool should remain free for general use. Whilst the club’s ambitious attempt is by no means unprecedented, the key underlying strength of a trade mark lies in its distinctiveness. This was fundamental to successfully registering ‘YOU’LL NEVER WALK ALONE’. Although a well-known song, its status as the club’s anthem played at every home fixture since 1963, as well as being the text on the club’s crest, mean that the song title has over time acquired sufficient distinctiveness to become associated solely with Liverpool FC.

Registering names of particularly well-known areas is without doubt a contentious topic. Clearly, the names of places without such significance will, for a multitude of reasons, be easier to register. However, where a place is deemed to have ‘geographical significance’, then accompanying that name with a logo or other form of distinctive addition will help to make a successful trade mark application more likely.

For more information on the items raised in this article please contact Mark Elmslie on 01223 532720 or click here to email Mark. Alternatively you can also contact Joe Greenstock on 01223 461155 or click here to email Joe.