Liverpool FC beats Lotto in TM dispute

Liverpool FC has successfully defended two trademark registrations before the UK Intellectual Property Office (IPO).

In a decision on Wednesday, May 8, the IPO said the football club could register marks that show two overlapping, hollow diamond shapes. One of the applied-for marks also has the phrase ‘SGG Apparel’ written underneath.

Liverpool FC had applied to register the marks in classes 3, 14, 18, 24, 25 and 35, for goods including clothing, toiletries and accessories.

The marks were opposed by Italian sportswear manufacturer Lotto Sport Italia, which said the mark infringed two of its earlier trademarks which are also registered in classes 3, 14. 18, 25, and 35.

The earlier marks are for two overlapping rectangles, in black and white. Lotto Sport said the marks “have been the subject of long and continuous use” for the brand and have been used in sponsorships of various sports sponsorships.

In its decision, the IPO said that much of the goods covered by the applied-for mark and earlier marks were either identical or highly similar.

But, it said the goods in question, especially clothing, are goods that are viewed with “specific reference to trademarks appearing on them”.

As a result, “consumers are well used to comparing these marks and picking out the differences between them,'' it said.

It also said there can be no aural comparison between the applied-for marks and earlier marks as neither of Lotto Sport’s marks has any words.

The IPO found that conceptually, Liverpool FC’s mark is an “interlocking diamond device”, whereas Lotto Sport’s mark “is rectangular and so they differ conceptually”.

“Overall, the marks are quite different and not at all similar,” the IPO said.

Additionally, the IPO said Lotto Sport had failed to show quantifiable use of its marks in the UK, so it could not benefit from enhanced distinctiveness.