FC Liverpool, LFC and Liverpool trademarks
With 19 league titles, 6 European cups and 8 FA cups, FC Liverpool represents one of the most successful football clubs in the entire history of British football. The club has successfully registered a number of trademarks, ranging from LFC to FC Liverpool and its logos, providing effective brand protection for the club’s merchandise, broadcasting and other commercial activities. In 2019, FC Liverpool sought to extend this level of protection by registering the word Liverpool, with the hopes of addressing the growing sales of fake merchandise and products. The trademark application was filed in a total of 8 classes, including class 9 (Media content), 16 (Stationery), 25 (Clothing), 28 (Toys and sports equipment), 35 (Retail and wholesale services), 38 (Telecommunication services), 41 (Education, entertainment, multimedia production and sports) and 43 (Hospitality services).
Refusal of “Liverpool” trademark filed by FC Liverpool
The trademark application for the word “Liverpool” has been rejected due to the geographical significance of the city. The reaction towards this decision from the supporters union Spirit of Shankly highlighted the critical view that “the word Liverpool is not for anybody to own, it belongs to the city of Liverpool and its people. We should all be allowed to use it freely, however we see fit, without fear of legal letters dropping through our doors.” [1]
At the same time, it needs to be pointed out that the trademark application filed by FC Liverpool clearly specified that the brand protection is sought only for goods and services in relation to the football club and the game of football. As a result, this trademark application never sought to gain exclusive rights for the word “Liverpool” itself, merely the use of this branding in the context of football products and services.
Chelsea FC, Tottenham Hotspur and FC Liverpool
Interestingly, FC Liverpool is not the first football club that attempted to register a word trademark for the name of the city / borough in which it is located. This attempt was preceded by a successful registration of both Chelsea and Tottenham. So what makes a difference in this case that led to the rejection of the “Liverpool” trademark application?
An argument raised by the UKIPO revolves around the relative size of the city / borough. Both Chelsea and Tottenham represent much smaller and more confined boroughs in comparison to the city of Liverpool. Furthermore, a significantly higher number of businesses as well as affiliated businesses (e.g. other football clubs, sportswear producers) are based in Liverpool in comparison to the other two areas.
L’Oreal’s “Liverpool” brand
After reviewing the UKIPO database of registered trademarks, our team of trademark attorneys has identified one registered trademark for the word “Liverpool’. It is owned by L’Oreal and covers several items in Class 3, namely hair preparations and treatments; hair care preparations not for medical purposes; preparations for setting hair. This trademark has been registered in January 2020 and we were so far unable to find commercially available information about the corresponding products produced by L’Oreal. Regardless of the current issue regarding the non-use of this trademark, the rejected application filed by FC Liverpool can be expected to create a precedence for challenging the validity of the “Liverpool” trademark owned by L’Oreal.
