Making its mark - Liverpool's challenge

Brands immediately stimulate emotions. That is why they are so powerful – they communicate to customers directly. No need for a detailed explanation. They create images of past experiences – and football brands are no exception.

It is no surprise then that Liverpool Football Club (“LFC”) wish to protect their brand – but is seeking to register just the name “LIVERPOOL” as a trade mark belonging to LFC a step too far? What about other businesses in Liverpool; and what about people who just want to identify their support for Liverpool – whether the football club or the Beatles, or as the European Capital of Culture for 2008 – still something which shows its impact more than a decade later?

Controversy with registering and enforcing trade marks for football clubs is nothing new – just think back to Dulwich Hamlet's trademark dispute last season. But for clubs it can represent a major source of revenue. Merchandise and franchising generate substantial income and reinforce the value of rights such as broadcast and streaming rights for matches.

This has already raised a challenging question – where does this leave individuals who (just) wish to express support for their club and wear a shirt with their club's (or their city's or their team member's) name. Does the club have a monopoly in authorising the use of the name on shirts? That question led to a dispute with Arsenal Football Club which found its way to the European Court of Justice: was use of the name “Arsenal” as a badge of support a trade mark infringement? 

The dispute provoked a fundamental disagreement between the High Court and Court of Appeal in England. The Court of Appeal's view - use as a badge of support (at least where the club name had a substantial reputation) was a trade mark infringement. Regrettably, before it reached the House of Lords (now called the Supreme Court), the dispute was settled by the parties.  

However, that is not the end of the question for LFC. In the Arsenal case the name was already registered as a trade mark – LFC are just at the kick-off; and even once it is registered (if it ever gets registered), a brand is not just about making money. How it is enforced matters. The very fact that it stimulates emotions means that heavy-handed or inappropriate enforcement can impact on the brand's image. 

One only has to look at a couple examples to see this. In 2017, Brewdog, the brewers, sought to enforce their registered trade mark for “Lone Wolf” against an independent pub called “The Lone Wolf”.  This drew negative publicity. Brewdog, “a vocal critic of large, faceless brewing firms, [was] accused of acting like ‘just another multinational corporate machine'”. 

Brewdog eventually backed down, saying:

Although they wear suits and are mostly sensible folks, lawyers can sometimes go a bit crazy and forget the kind of business we are and how we behave. They are sorry for their actions and we have put them on washing up duty for a week.” 

And as Ryanair knows only too well, a brand can kick off negative emotions just as effectively as positive ones, making them the recent butt of their own “smart” tweet offering of “Geography for Dummies” to British Airways. This led to suggestions by Twitter users that Ryanair could read “Customer Service for Dummies”. As an aside, Ryanair's attempt to troll British Airways amusingly backfired even further when shortly afterwards a Ryanair flight that was supposed to go to Germany somehow ended up in Scotland.

Turning back LFC's matter, when asked about their approach, LFC said:

We are applying to register ‘Liverpool' as a trademark, but only in the context of football products and services. We are not, and wouldn't ever, seek to register ‘Liverpool' across the board.  … This application is strictly to protect the club and supporters from those benefiting from inauthentic products.”

But will that position stand the test of time, or will there be too much temptation to protect revenues and stretch “their patch”?  There is plenty of evidence of other trade mark owners, once they have a registration, behaving in a heavy-handed and aggressive manner, particularly to small businesses with limited resources.   This may not be LFC's intention, but that gives little comfort to less well-funded users of the ‘Liverpool' name.

When seeking registered protection for a trade mark, it is necessary to set out the goods and services on which owner intends to use the mark. This forms the focus of where the owner is seeking to prevent unauthorised use of the mark.  In this case, LFC is seeking to include an express limitation on the scope of cover– effectively to football related goods and services.  For example, in relation to clothing (which will include T-shirts etc.) they have inserted a limit to such goods “being sporting goods used for playing the sport of football, or being memorabilia in connection with a football club”.  And in relation to brochures etc. to those being, again, “memorabilia in connection with a football club.”

This seems to show good intentions.  But is it enough? For example, is it always crystal clear when goods are “memorabilia in connection with a football club”?  What about a book on Liverpool Football Club or a wrist band with the name ‘Liverpool' on it?  And in relation to sporting goods “used for playing the sport of football”, isn't that potentially true of a wide range of clothing? Athleisure clothing is a widespread trend, and do we always get changed for a kickabout?

In addition, this limitation does not actually prevent the trade mark owner from claiming that a use of the trade mark on other goods infringes the trade mark.  For example, the right to claim trade mark infringement can extend to “similar goods and services” and even, in some cases, to “dissimilar goods and services”. These options are not infrequently used by heavy-handed trade mark owners.

Rolling back a little, will the use of these “football-only” limitations be permitted by the UK Intellectual Property Office? The IPO is under a duty to protect other traders' or users' interests.  That means not putting them in a position where their legitimate free use of a name (like Liverpool) is impacted by concern about possible trade mark infringement. The IPO must also to ensure that when registered the boundaries of the scope of protection sought are well-defined. 

The limitation to “football memorabilia” may alleviate some concerns under the first head, but is likely to raise concerns that it is not clear.  Of course, LFC might say other clubs have managed to register their names (such as Southampton) without any such limitations.  However, now that the limitation is included, it is unlikely that the IPO will permit it simply to be removed. 

We will have to wait to see whether the IPO is persuaded that the mark can be registered, and whether third parties oppose it. If it is registered, will LFC (and its lawyers) stick to script it has already written? Let's hope they do: there are many trade mark owners out there who are conscious of the implications to their brand of thoughtless enforcement.

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