Leicester City FC scores UKIPO trademark win against Leeds club
Football club Leeds City has failed in its bid to register an ‘LCFC’ trademark, after the UK Intellectual Property Office (IPO) found in favour of an opposition by the UK Premier League’s Leicester City.
The IPO’s hearing officer handed down the decision on Monday, July 12.
In February 2020, Leeds City, which was founded before the city’s more successful team, Leeds United, applied to register the disputed trademark for goods and services, including instructional and teaching materials, clothing, footwear, headgear, badges and photography.
Leicester City opposed the application, arguing that the contested mark was too similar to the opponent’s marks and that the goods and services at issue are identical.
The club further argued that the reputation of the earlier mark in the UK “means that the contested mark would cause the relevant public” to erroneously believe that there is a “connection” between the parties.
This would also lead Leeds to gain an unfair advantage through the use of the contested mark, causing a dilution or blurring of the reputation and distinctive character of the earlier trademark, stated Leicester City.
Leicester City claimed that it has goodwill connected with the sign ‘LCFC’ as a result of the use it has made of the sign throughout the UK since 2000.
Against tremendous odds
Leicester also stated that its club and mark came to particular national prominence in the 2015/2016 football season when it won the UK Premier League championship against “tremendous odds”.
But the IPO hearing officer, Heather Harrison, found that “LCFC” was the secondary brand identifier to “Leicester City”/“Leicester City Football Club”, and that there was no evidence to conclude that the earlier mark’s distinctiveness had been materially increased over the past five years.
She also found that there were significant differences between the marks. The contested marks were complex figurative marks containing a number of elements, whereas the earlier mark, “LCFC Ltd” is in plain, very small letters at the bottom right of the mark.
However, the officer agreed with Leicester City that the contested marks will be perceived as the crest of a football club, as the words “Leeds City Football Club” point the consumer decidedly in that direction.
She also noted that it is commonplace for football clubs to use “FC” in their designation and that at least a significant proportion of consumers will perceive “FC” in the earlier mark as meaning “football club”. Consequently, she ruled that the marks had a medium degree of conceptual similarity in such circumstances.
Indirect confusion
While the significant visual differences between the marks ruled out the possibility of direct confusion, Harrison ruled there was a likelihood of indirect confusion for the average consumer, in either group, paying even a reasonably high degree of attention.
“The string ‘LCFC’ is present in both marks. The average consumer is likely to associate both trademarks with a football club and, in the absence of any other indication as to origin in the earlier mark... the average consumer is liable to be confused that the later mark is another mark used by the owner of the earlier mark, or vice versa,” she said.
Harrison subsequently concluded that this “common element” would be enough to lead the consumer to believe that the marks are used by the same or “economically connected undertakings”.
The IPO ordered Leeds City and LCFC Limited to pay costs to Leicester City.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
