Leicester City gain the victory in ‘LCFC’ trade mark dispute

Fresh from their wins over Southampton FC and Watford this past week, Leicester City Football Club has picked up another victory, this time in the form of a trade mark dispute against Leeds City.

The ruling from the UK Intellectual Property Office (UKIPO) comes after former Premier League winners Leicester City had opposed the registration of two trade marks by non-professional football team Leeds City, who play in the West Yorkshire Football League.

Last summer, the Yorkshire side applied to register two trade marks, which feature a shield flanked by an owl either side and include the lettering ‘LCFC’. These trade marks were registered in relation to printed items, clothing and footwear, badges and the education and delivery of training.

Leicester City opposed the trade marks regarding the ‘LCFC’ lettering based on their ownership of a UK trade mark for LCFC. The former Premier League champions claimed the applied-for trade marks by Leeds City were similar to their own and covered identical goods and services within the same industry.

They claimed that Leeds City was using the ‘LCFC’ branding to ride on the reputation of Leicester City.

Matthew Williams, acting on behalf of the UKIPO, found that the goods and services covered by the trade marks were identical and concluded that there was a likelihood of confusion, ruling in favour of Leicester City.

Mr Williams said: “The marks differ notably in that the applicant’s mark has large and striking device elements, entirely absent from the opponent’s earlier mark. However, the opponent’s earlier mark features in its entirety in the applicant’s mark, occupying a central and striking position.

“The two marks are both aurally and conceptually similar to a degree between medium and high.”

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Maung Aye
Maung is a partner in our Corporate and Commercial department. He joined Mackrell Turner Garrett following corporate law positions in London and in a leading regional firm in Essex. Maung read European Legal Studies at Lancaster University and the Università degli Studi di Trento and is a fluent Italian speaker.