Think Liverpool got their IP strategy wrong? Think again…

There has been a lot of public attention and press coverage of Liverpool FC’s recent attempt to register the word LIVERPOOL as a trade mark for a wide range of football-related goods and services.

Unsurprisingly, given the size and fame of the city, their Trade Mark Application was rejected by the UK Intellectual Property Office on the basis that Liverpool is more "geographically significant" as a city than other place names (such as Everton, Tottenham and Chelsea) that have previously been trade marked. Liverpool FC saw the way the wind of public opinion was blowing and wisely accepted the decision without filing an Appeal.

The Club argued that they had filed their Application to stop counterfeiters from benefiting from the sale of counterfeit Liverpool FC products. Whilst this attempt was ultimately unsuccessful, and the club may now be licking their wounds in the face of the backlash from Liverpudlians (fans and non-fans alike), they have widely propagated the message that they are very serious about taking on counterfeiters.

In addition, less publicly, they have accumulated a substantial portfolio of other Intellectual Property rights to use in the battle against counterfeiters. They have a wide range of UK and European Union Trade Mark Registrations for various slogans, logos and words, including a Registration of the words LIVERPOOL FC dating back to 2008. Notably, they have also used Registered Designs to protect the appearance of this year’s home kit. With design protection being relatively inexpensive, those Design Registrations could prove to be very cost-effective tools in their armoury, and they could choose to file new Design Applications each season to update protection as sponsors and designs change. Next year, they could even consider filing multiple Design Applications to protect their away strip as well.

Liverpool FC may have misjudged the mood of the people of Liverpool when they tried to gain a monopoly in the city’s name for football-related products and services. But taking a broader view, as on the pitch this season, they may actually be close to having found a winning formula when it comes to IP protection.

At Abel + Imray we make the effort to understand your club and its commercial ambitions, and we work with you to create and execute a sensible strategy for your intellectual property.

Find out why we should be in your first team by booking a complimentary meeting or call with one of our experienced brand protection attorneys.

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