02 May 2023

Keen golfers and sports fans among us will no doubt be aware of the existence of the LIV Golf Tour (“LIV Golf”). For those not aware, LIV is a new professional golf tour created in 2021 as a rival to the well established PGA Tour and DP World Tour. In its short lifespan, LIV Golf has attracted household names in the sport of golf away from the establishment and into their new competition designed to “disrupt” a sport that seldom breaks away from tradition.

In its quest to become a household name, spoken in the same breath as the PGA Tour and DP World Tour, LIV has found itself mired in controversy and legal battles. For example, LIV Golf has been subject to heavy criticism and allegations of “sportswashing” with its large offerings of prize money funded by the Saudi Arabian “Public Investment Fund”. Moreover, courts in the USA are soon to issue a judgment in a dispute between the PGA Tour and LIV Golf concerning allegations of anti-competitive business practices.

More recently, however, LIV Golf has been subject to a trade mark registration dispute with a well-known and vastly popular Miami-based nightclub. A dispute that has had an effect in the UK. In late 2021 and early 2022 LIV Golf attempted to register a number of trade marks in various countries including the UK. Applications were submitted in the UK for the following words and logos:

• LIV GOLF  (Application Number: UK00003765002)
• LIV GOLF LEAGUE(Application Number: UK00003715506)
• LIV GOLF LEAGUE 54(Application Number: UK0003715509)
• LIV GOLF INVITATIONAL(Application Number: UK00003765007)

UKIPO Application: UK00003783165

These particular marks were to be registered in trade mark classes 25 (clothing, footwear and headgear), 28 (sporting articles) and 41 (sporting and cultural activities).

The marks were opposed by representatives of LIV Nightclub Events (“LIV Club”), who claims to have traded under the name “LIV” for in excess of 15 years and have registered the following marks in the UK:

• LIV (UKIPO Trade Mark Registration Number: UK00909760554 and UK00915834625)

UKIPO Trade Mark Number: UK00917260043

LIV Club holds its marks in Class 41 (sporting and cultural activities) and Class 43 (hospitality services).

Founder of LIV Club, David Grutman, opposed the trade mark applications by LIV Golf and claimed that LIV Golf’s marks are “visually, phonetically and aurally similar and the goods/services offered share similarities” . He highlighted further that the applications by LIV Golf, in his opinion, infringe on trade marks registered by his organisation in the entertainment sector, not only in the UK but globally. The objection concludes that the names and marks are so alike that consumers will believe that LIV Golf’s trade marks are affiliated with or endorsed by LIV Club and that their registration will dilute the distinctive quality of the nightclub’s trade marks.

What is the Law?

Trade marks in the UK are governed primarily by the Trade Marks Act 1994. The law says that a trade mark will not be registered where the mark applied for is:

• identical to a registered trade mark in relation to goods or services which are identical to those for which the trade mark is registered;

• identical to a registered trade mark and used in relation to goods and services which are similar to those for which the trade mark is registered and a likelihood of confusion exists;

• similar to a registered trade mark, and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered and a likelihood of confusion exists; and/or

• identical or similar to a registered trade mark, the trade mark has a reputation in the UK, and the use of the sign without due cause takes unfair advantage, or is detrimental to, the distinctive character or reputation of the trade mark.

The argument of LIV Club appeared to be there was a reasonable likelihood that the general public would confuse the similar logo and name of the brands resulting in a belief that the two are associated. Which, of course, they are not. However with LIV Golf branding itself as a new form of golf with a more festival type atmosphere there is certainly the potential for the two brands to be confused.

Opinions will differ on whether the two brands are sufficiently similar as to cause confusion to the general public and, as LIV Golf has scaled back the areas covered by its now registered trade marks,  we will not know what a court or indeed the UKIPO would have determined.

If you have any queries about existing trade marks, applying for a trade mark, or infringement of your trade mark please contact the BTO Intellectual Property Team by email at prm@bto.co.uk, lyr@bto.co.uk, lmf@bto.co.uk, lmo@bto.co.uk, or jgs@bto.co.uk.

Jamie Stewart, Trainee Solicitor: jgs@bto.co.uk /  0131 222 2939

Lynn Richmond, Partner & Accredited Specialist in IP: lyr@bto.co.uk / 0131 222 2934