22 Oct Liverpool FC backs out of trade mark registration
When a recent trade mark application from Liverpool FC received a large number of threatened oppositions, they decided to withdraw the mark. Serjeants’ trade mark attorneys explain:
On 20 June 2019 Liverpool FC filed for a trade mark covering a number of classes for the mark LIVERPOOL. The mark was later divided into two separate trade marks;
- UK Application No. 3418051 covering classes 16, 35, 38, 41 and 43 – this did not pass the examination stage.
- UK Application No. 3408413 covering classes 9, 25 and 28 – this did pass the examination stage and was subsequently published on 9 August 2019.
According to the UKIPO website, the application received 54 threatened oppositions during the publication period.
Goods that were registrable by Liverpool FC for the new trade mark
It has been widely reported that the UKIPO refused to allow the mark, however it seems that actually the UKIPO thought that the mark was registrable for the following goods:
Class 9: Software; downloadable software; mobile apps; podcasts; downloadable podcasts; mobile apps; software applications; software for the provision, development and editing of podcasts; all of the aforesaid goods relating to the sport of football.
Class 25: Clothing. Footwear, headgear; tracksuits; socks; jogging rousers; scarves; hats and caps; underwear; shorts; trainers; jerseys; shirts; uniforms; boots; singlets; all of the aforesaid goods being sporting goods used for playing the sport of football, or being memorabilia in connection with a football club.
Class 28: Games, toys and playthings; video game apparatus; sporting articles; decorations for Christmas trees; all of the aforesaid relating to the sport of football; footballs; reduced size footballs; tables for table football; miniature replica football kits; football or soccer goals; shin pads for football; nets for football goals; football ball bags.
Liverpool FC withdraws the mark
For reasons that are not clear, the owners of Liverpool FC have since decided to withdraw the mark for LIVERPOOL. This could be based on the amount of oppositions it received, including one from the Mayor of Liverpool, or down to the backlash that they received from fans.
Some fans staged a protest as they believed that the registration of the trade mark would prevent local stall holders from producing Liverpool football related products. These products are not counterfeit versions of the authentic kit, but simply products that reflect the fan culture of Anfield.
It is not unusual for football clubs to register the name of their location; Chelsea and Tottenham have both obtained registrations. However, it is not common practice.
Weighing up the benefits
This case isn’t about the UKIPO not accepting the mark as a trade mark. It is about weighing up the benefits of registration with the possible tarnish to Liverpool FC’s reputation if they proceeded with the application.
When to pursue a trade mark registration
When a trade mark registration attracts so many oppositions, the applicant must assess whether the benefits of owning the mark outweigh the potential negativity it could cause and the effects on a company’s brand.
If you have received opposition over a trade mark registration and are unsure how to proceed, speak to one of our experienced trade mark attorneys who can advise you of the best way forward.