Recently, Liverpool Football Club (LFC) a prominent Football team of the English Premier League attempted to trademark the word “Liverpool” in furtherance of the services and merchandise provided by the club, with the hope to tackle the issue of unofficial counterfeits in the market. They followed suit form the various clubs like Chelsea, Everton, and Tottenham.
After winning the Champions League trophy 2018-19, the team not only saw a surge in the sale of their merchandise but also a huge number of counterfeits in the market. They feared it will cause a huge loss to their club which was being deprived of their rightful profits. The club put out a statement of purpose making it clear that their sole aim of protecting the best interest of their club and their supporters. [i]
This action saw a huge backlash from the fans of the club stating that the ‘Club’ and its name should belong to the Fans and supporters along with the city and not to the owners of the club. [ii] They argued that by attaining a trademark for the name, the club owners will deprive the supporters of their rights on the club’s name.
However, the club had filled their application on a legitimate expectation that just like the team of Chelsea and Tottenham Hotspurs they too will be allowed to trademark their own names, but, to their disappointment, the Intellectual Property Office (IPO) denied their trademark, and rejected their application on the basis that the word “Liverpool” held a ‘geographical significance’ that the others did not. It was inferred that the name belonged to the city of Liverpool and not to its Football Club, which is why giving the club a right to own the Mark would deprive the city and its people of its own name.
The club on 26th September 2019 thus released a statement informing that they accept the decision taken by the IPO. At the same time, they stated that they will continue to aggressively pursue the large-scale operations which seek to illegally exploit their ‘intellectual property’. [iii]
This brings to the discussion of what exactly is geographical significance while considering a trademark application. As discussed in previous blogs, a Trademark is a unique mark, capable of being graphically represented and can distinguish the goods or services of one from that of the other, this mark can include “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.” [iv]
However, the question here is, can the name of a city in terms of a Sports Club representing that City be trademarked? It is pertinent to look into the concerned sections of the Trade Marks Act, 1994 that guides the trademark law in the United Kingdom.[v]
“3. Absolute grounds for refusal of registration
(1) The following shall not be registered—trademarks
(a) signs which do not satisfy the requirements of section 1(1),
(b) trademarks which are devoid of any distinctive character,
(c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of the rendering of services, or other characteristics of goods or services,
(d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bonafide and established practices of the trade:
Provided that, a trademark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
Therefore, we can see that the rejection under Section 3(1)(c) is not absolute, in cases where it is distinctive in nature and has a unique identity, it can still be granted under the Act. Further, Section 6 also provides for exceptions to the use of a registered trademark, stating that a registered trademark is not infringed by the use of signs or indications which are not distinctive or which concern the kind, quality intended purpose, value, geographical origin, the time of production of goods or of the rendering of services, or other characteristics of goods or services. [vi]
Further, as per Protected Geographical Indications, terms used in the trademark, should not be deceiving as to the quality of the product, the geographical indications in the trademark should not provide an unestablished quality of the product. For example, using the term Somerset Gold for a cider company would be deceiving if the company does not belong to Somerset and or the use of a term like Scotland Yard for a single-malt whiskey, if the company is not genuinely from Scotland, because it will deceive people of the quality of the company, given the fact that these places are famous for their cider or single-malt whiskey, respectively.
However, in the present case, this exception is not valid, because Liverpool Football Club represents the City, not a world forum, it is not only a world-recognized football club, it is a brand in itself. Therefore, using the term “Liverpool” as a trademark for its merchandise and services would ideally not have caused any presupposed existence of deceit or serious risk of defrauding a customer.[vii] However, it being the name of the City, a trademark would mean that ‘Liverpool’ being used by any other local football team of the city would create huge trouble for them, which will be extremely unjustified. Three business houses have tried to trademark the term “Liverpool” in the past decade, but have surely failed.
It is pertinent to mention that the Club has three prominent trademarks registered in their name, “Liverpool FC”, “LFC” short for their name and “YNWA” for their theme song, You Never Walk Alone. Given the fact that they already have a recognized brand name, they necessarily do not name the city’s name to serve the purpose of protecting themselves from counterfeit merchandise.
v. Trade Marks Act, 1994 § 3, United Kingdom
vi. Trade Marks Act, 1994 § 6 (2)(b); United Kingdom
vii. Elizabeth Emanuel v Continental Shelf, 2006 ETMR 5