Liverpool Football club wins Trademark dispute against Lotto Italia Sport

May 29,2019:

The Intellectual Property Office ruled in favour of Liverpool Football Club in a trademark dispute against Lotto Italia Sports.

Liverpool FC and Athletic Grounds Ltd applied for trademark application of its hollow shaped design of two trademarks in respect of Class 3, 14, 18, 24, 25 and 35.

Lotto Sport Italia, the Italian Sportswear brand opposed the application on January 2018, stating that they are the owner of the “mark,” applied for.

The applicant filed two counter statements denying all the allegations in April 2018. The matter was heard in April 2019, and the order was declared on May 8th 2019.

The application of trademark is opposed under the provisions of Sec 5(2) (b) and Sec 5(3) of Trademarks Act 1994. Sec 5(2) (b) states the conditions under which a trademark cannot be registered.

It is a case between Applicant’s trademark 3261155, 3261166 and Opponent’s trademark EU 2109684, 16583619. Applicant’s trademark number 3261155 bears the words “SGG APPAREL”.

Whereas both of the trademarks of the opponent bear no words. Lotto said in the court that it distributes the product in 110 countries and there is a vast number of retailers of Lotto’s product in the European Union. The opponent claimed that LOTTO and the double field logo are their trademarks for a long time.

The opponent opposed the trademark on the ground of likelihood confusion. After looking into the evidence and marks, the IPO observed that opponent’s marks and applicant’s marks are different in shape.

The marks of the opponent are a combination of two interlocking or overlapping rectangles with a rectangular hole in the middle. Marks designed in a two overlapping diamond shape are the design of trademark for the applicants.

Therefore, the IPO found that both of the marks had no words and so it lacks aural comparison. The IPO was not convinced with the evidence of brand reputation and sales indexes in the European Union and the United Kingdom.

Hence the Court rejected the point of confusion. Giving reference to case law, the IPO said that the trademark for which protection is sought must be known by a significant part of that relevant public.

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