16/07/2020
Manchester United Football Club Limited (“Manchester United FC”) has initiated trade mark infringement proceedings in the High Court against SEGA Publishing Europe Limited, the European arm of the Japanese video-game brand, and Sports Interactive Limited, producers of the video game Football Manager® (together “the Defendants”).
The game
Football Manager® has been around since 1992 and is a hugely successful football management simulation video game. Players can manage their own virtual equivalents of real life clubs, controlling everything from pre-season transfers to the tactics on the pitch. The game provides an immense database of clubs, spanning 130 separate leagues from around the world and 50 national sides.
The Football Manager® database is so comprehensive that it is used by real-life football clubs as a valuable source of information for scouting new players. (Some trivia for the fans: the top goal scorer for the Philippines national side, English-born Phil Younghusband, was signed up by the Philippines Football Federation after an anonymous Football Manager® player tipped them off about Younghusband’s performance in the youth programme at Chelsea FC and his eligibility for the national side).
In the course of making their in-game football leagues as close as possible to the real-life counterparts, Football Manager® uses the actual names of clubs, football players, and even team staff members, including coaches, loan managers and physiotherapists.
One omission that football fans will quickly pick up on is that Football Manager® does not always feature the logo of every football club. For some clubs, Manchester United included, the actual logo has been replaced by one of 14 generic logo templates that are randomly chosen by the game engine.
The claim
In these proceedings, one of Manchester United FC’s claims is that the use of the MANCHESTER UNITED club name in the Football Manager® game infringes its EU trade mark registration for the words MANCHESTER UNITED. This registration covers a large number of goods, including goods in Class 9 relating to video games and computer software.
Manchester United FC allege that the use of the MANCHESTER UNITED mark is an infringement of Article 9(2)(a) of the European Trade Mark Regulation (“EUTMR”) (that an identical mark has been used in relation to identical goods) and an infringement of Article 9(2)(c) EUTMR (that an identical or similar mark has been used in a manner which is detrimental to or takes unfair advantage of the trade mark’s reputation or distinctive character).
It is claimed that the MANCHESTER UNITED mark in the Football Manager® game impairs the ‘essential function’ of the mark, which is to guarantee the origin of the branded product to the consumer, in that gamers will mistakenly assume that the game is licensed or otherwise endorsed by Manchester United FC. It is also claimed that the use of the MANCHESTER UNITED mark in the Football Manager® game will impair Manchester United FC’s ability to use this mark to promote their own goods and services (the mark’s ‘advertising function’) and their ability to use its mark to attract consumers and preserve their loyalty (the mark’s ‘investment function’).
So far, so normal, as far trade mark infringement claims go.
Where this case really looks to depart from well-trodden ground is the further claim that the fact that the Manchester United FC logo is not used in the Football Manager® game constitutes an infringement of Manchester United FC’s registrations of this mark (shown below).
Manchester United FC assert that the Defendants have taken an active step in removing the Manchester United logo, remarking that many other clubs in the game have their real-world logos displayed alongside their team names. It is argued that when gamers encounter true to life details concerning the club, including the use of players’ names, staff names and even the Old Trafford stadium name, these gamers would fully expect to see the Manchester United logo used alongside such identifiable real world game play.
Manchester United FC claim that the removal of the Manchester United logo from the game deprives it of the ability to control the exploitation of its EU trade mark registration, including the right to license the use of the mark to the Defendants, and that this impairs the essential function, advertising function and investment function of the Manchester United FC logo trade mark.
This claim is bought under Article 9(2)(a) EUTMR, which protects a trade mark owner against the use of identical marks for identical goods or services to those covered by the trade mark registration. Manchester United FC’s logo is registered for goods which are arguably identical to the Football Manager® video game; however, the facts of this claim centre on the use of a completely different mark to Manchester United FC’s registered trade mark.
This is certainly a novel line of argument that Manchester United FC is putting forward. If this claim is successful, and if the outcome is not overturned on appeal, there will be some serious implications for UK trade mark law, opening up the possibility of parties being held liable for infringement in circumstances where a registered trade mark is deliberately not used. This is definitely a case to keep an eye on. Watch this space for an update when the High Court’s decision is published.
Manchester United FC’s EU Trade Mark Registration number 761312:
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
