Can you Register a Trademark for a Song or a City? Liverpool FC vs The Locals
Liverpool Football Club, one of the oldest and most storied football clubs in the world, have recently attempted to register trademarks in the words LIVERPOOL and ALLEZ ALLEZ ALLEZ (“allez” is a French word meaning “go on” or “let’s go”).
Balancing Broad Brand Protection
The trademark filing for the word LIVERPOOL across a number of goods and services was met with strong opposition. Liverpool FC have stated that the marks were registered in an attempt to curb counterfeit merchandise products and protect their brand internationally. The club have since withdrawn the trade mark, following backlash from locals.
However, this is not the first time the club have attempted to register a mark specifically referable to the club’s geographic origin in use already. Liverpool FC successfully registered a mark incorporating the city of Liverpool’s mascot – the mythical liver bird – in 2010, amid controversy.
That trade mark was also met with strong opposition from local businessman Mr Alfie Hincks, supporter of cross-town rivals Everton Football Club also located in the greater city of Liverpool. Mr Hincks filed a trademark opposition to Liverpool’s registration of the liver bird on the basis that the liver bird was known widely as the symbol of the city of Liverpool.
What saved Liverpool FC’s 2010 mark was the combination of the liver bird with other elements to create a distinct and stylised mark. Locational marks should be combined with a logo in order to preserve their distinctiveness in relation to goods and services.
Indeed, Liverpool FC’s trade mark for the club crest combines a liver bird with the name of the club as well as the iconic wrought iron gates marking the entrance to the club’s stadium, Anfield.
Distinctive Devices
Many other clubs have adopted this approach when registering trademarks for their club’s crest, which can also include a mascot referable to the club’s origin or location. The key point to remember is that the logo must be stylised to distinguish the goods and services.
While evidence of use of the trade mark over a long period of time can also assist, the strength of a trade mark in countering any future opposition proceedings lies primarily in distinctiveness. For example, Spanish club Valencia CF have learned in their long-running fight against DC Comics that even extensive use of a logo may not be enough to counter claims that a logo is not distinctive.
DC Comics have repeatedly attacked the Spanish club for the similarity of the bat that appears in Valencia’s logo to DC Comics trademarked Batman logo. This is despite Valencia having continued to use their logo since 1919 while Batman’s heraldry was first created in 1939.
Can you Trademark Song Lyrics?
Liverpool’s word mark ALLEZ ALLEZ ALLEZ refers to a terrace chant originally sung by fans of Portuguese club, FC Porto. The chant originated from a once-popular 1987 Italian disco song L’Estate Sta Finendo (The Summer is Ending). The lyrics to the song have since been adopted and adapted by football fans, with Liverpool fans being the latest – coming to the disco party last year following their impressive run into the European Champions League final.
Variations of the chant have been sung by other clubs across Europe, including Genoa CFC, Juventus FC and FC Napoli in Italy, Rangers FC in Scotland and Atletico Madrid in Spain. The chant even found its way to the English national cricket team following their success in the Cricket World Cup in July this year. Despite all this, Liverpool FC filed to trade mark the words ALLEZ ALLEZ ALLEZ in Class 25 with the UK Intellectual Property Office in November 2018.
It is likely that Liverpool were looking to commercialise the words to the chant by including them on club merchandise and sports clothing under Class 25. However, it is highly unlikely that the words would be distinctive enough for them to be accepted as a trade mark referable to Liverpool FC alone. Indeed, the trademark might also be opposed on the basis that other football teams might wish to use the words when many other European clubs have adopted the chant before Liverpool.
Club Anthems & Evidence of Use
It is worth noting that Liverpool do currently hold trademarks for the words YOU’LL NEVER WALK ALONE and YNWA. The marks refer to a song of the same name originally performed as a show tune in 1945 and later made famous by Frank Sinatra, Roy Orbison, Elvis Presley and the like.
However, the song has been used as the club’s anthem and played at Liverpool’s Anfield Stadium before every home game since 1963. The words had acquired distinctiveness and had become associated with Liverpool as a result of their extensive use. Ask any football fan and they will say You’ll Never Walk Alone is Liverpool’s club song.
Liverpool later began to include YNWA and YOU’LL NEVER WALK ALONE in variations on the club’s crest trademarks, referring to the phrase as the club’s motto.
Lessons
On Songs: Where a song becomes so intimately associated with a brand, it may be the case that a trademark in the title or a memorable part of the lyrics will be allowed. However, significant evidence of use will be needed to support the registration application.
On Geographical Marks: It follows that the strength of a trademark in countering any future opposition proceedings lies primarily in making it distinctive. This is especially the case for geographical marks which can be combined with a logo or device to overcome the descriptiveness of a geographical name.
