Wednesday 31 July 2019 3:32 pm

Sports law Q&A: Can Liverpool FC trademark the word 'Liverpool'? A legal expert explains

Carissa Kendall-Windless is a senior associate at intellectual property law firm EIP. She currently focuses on multi-jurisdictional patent litigation and has also advised clients on copyright, trademarks and IP ownership issues.

Liverpool Football Club have caused a stir by attempting to register the name of their home city as a trademark.

Here, intellectual property solicitor Carissa Kendall-Windless examines Liverpool’s likely motivations and their chances of success.

What is the legal background?

Liverpool FC’s application for the mark “LIVERPOOL” is currently under examination at the UK Intellectual Property Office (UKIPO).

The club wants trademark protection for a number of goods and services including toys, photographs, clothing and broadcasting services.

However, the club has sensibly chosen to limit the scope of its application to goods and services “in connection with a football club”; it is not claiming a monopoly on the word “LIVERPOOL” per se.

What are the club’s grounds for doing this?

The club wants to ensure that supporters are only buying authentic Liverpool FC products.

Also, a registered trademark would make it easier for the club to assert its rights when dealing with counterfeits and unauthorised products.

How will this case play out?

The UKIPO is likely to grant the application as its scope is narrow.

It feels as though Liverpool FC are testing the water with a view to expanding protection into other territories in which their goods are manufactured.

Interestingly, however, another series of marks currently under examination is owned by non-league football club City of Liverpool FC. Their application is for goods including “football jerseys”.

It is highly unlikely this series of marks will survive without being broken down into separate applications.

Moreover, I suspect that Liverpool FC may file opposition proceedings against those applications, especially in light of its own recent attempt to carve out goods and services relating to football.

Could we see other teams follow suit?

In recent years UK and European IP authorities have tightened their criteria.

This may explain why in 2013 “TOTTENHAM” became a registered mark for pretty much all goods and services but, in contrast, why Chelsea FC has had to limit its specification to “goods relating to and/or bearing indicia of Chelsea Football Club”.

That said, without doubt more football teams will follow suit.

The cost of applications is minuscule in comparison to the salaries that players earn and, even if the application is unsuccessful, nothing is really lost because common law rights will remain and can be asserted instead.

You may see this trend spread to other sports, such as cricket and rugby union.

“YORKSHIRE COUNTY CRICKET CLUB” already exists as a registered trademark. Will they consider registering just “YORKSHIRE” for goods relating to cricket?

And what happens in those instances when a football, rugby and cricket club all want to register their goods by using a city name? Could we in that case see a number of entries for the mark “NEWCASTLE” – one for the football team and another for the rugby club?

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Ultimately, teams want to obtain registrations across a wide range of classes and, if possible, with broad specifications in order to cover any type of merchandising or possible sponsorship deals.

Although the scope of protection in these applications is limited, say, to “a football club” it will still be considered a valuable IP right which can be leveraged in commercial discussions.

Carissa Kendall-Windless is senior associate at intellectual property law firm EIP.

Main image credit: Getty