Manchester United are suing Sega Publishing and Sports Interactive (SI), the publisher and developer of the Football Manager game for alleged trade mark infringement: for use of the Manchester United trade name, as well as, it appears, the non use of the official crest next to that trade name.

Barristers Simon Malynicz QC (representing the club) and Roger Wyand QC (representing Sega and SI) attended a preliminary hearing before Mr Justice Morgan.

THE CLUB’S POSITION

Trade Name

Malinicz QC said that “the name ‘Manchester United’ is one of the world’s most valuable and recognisable brands”, the money made from licensing the club’s intellectual property is “very significant”, and that “the products and services that are licensed by the claimant benefit from an association with the club’s winning culture and its brand values”.

As such infringement may occur under s.10 of the Trade Mark Act 1994.

Official Crest

The club alleges trade mark infringement by using their name “excessively throughout the game” and “replacing the club crest with a simplified red and white striped logo” which “deprives the registered proprietor of its right to have the club crest licensed”.

The club also argued “consumers expect to see the club crest next to the name Manchester United…and this failure to do so amounts to wrongful use”, understanding that this argument is “somewhat novel, and certainly in the context of video games, but it is certainly arguable”.

Prima facie, use of a simplified and dissimilar mark would assist in proving non-infringement, so to argue that the publisher should use the official unlicensed logo appears to undermine the publisher’s decision to avoid trade mark infringement. Contrastingly, it may be that their argument seeks to prevent use of the club’s trade name altogether where a non-official crest is used. The club would need to clarify its position to run this argument.

At the hearing, Malinicz QC asked Mr Justice Morgan to amend the claim to include allegations involving “the practice of supplying ‘patches’ or ‘mods’, essentially downloadable files containing replica trade marks which consumers then incorporate into the game”. He argued that the game “encouraged” the use of patches supplied by third parties “by promoting the patch providers in various ways, and of course, they directly benefited from it by avoiding the need to take any license and enjoying increased sales of their game”.

SEGA AND SI’S POSITION

Trade Name

SEGA and SI argued that the use of the ‘Manchester United’ name is “a legitimate reference to Manchester United football team in a football context”.

The game’s publisher argued that “there is no likelihood of confusion or damage to the claimant’s EU trademarks…caused by the defendant’s activities”.

Wyand QC stated that preventing the publisher from using Manchester United’s name “would amount to an unreasonable restraint on the right to freedom of expression to restrain the use of the words ‘Manchester United’ to refer to a team in a computer game”.

Official Crest

The SI also argued that the use of a “simplified” club crest is “one of 14 generic logo templates that is randomly chosen by the Football Manager game engine each time a new game is started” and that the simplified crest “clearly indicates that the use of the (logo of) Manchester United is not licensed by the claimant”.

He noted that the game and the earlier version of the game ‘Championship Manager’ have used the club’s name since 1992 “without complaint from the claimant”.

Similarly Wyand QC stated that “copies of the game have also been sent by SI to a number of officials and players at the (club) for a number of years and there have been a number of positive press comments and tweets about the game by them” and “the claimant’s staff working in the data analytics and scouting teams have contacted SI on various occasions asking for access to the Football Manager database for scouting and research purposes”.

As a result, the publisher argued that “the claimant has acquiesced in the use by the defendants of the name of the Manchester United football team in the Football Manager game and cannot now complain of such use”.

The publisher argued that the club is attempting to “prevent legitimate competition in the video games field by preventing parties not licensed by the claimant from using the name of the Manchester United football team within such games”.

Roger Wyand QC opposed application to amend claim.

WHAT HAPPENS NEXT?

Mr Justice Morgan reserved his judgment on the club’s application to amend its claim to a later date.

The outcome, is likely to be watched closely by the gaming industry as it could result in further claims brought by other football clubs in a similar position.

Other football games that have been unable to acquire a licence for the use of a football club’s name have in the past opted for creative names to represent existing clubs. For example, before obtaining a license to use the Manchester United name for PES2020 the game Pro Evolution Soccer have used ‘Aragon’ and ‘Man Red’. Depending on the outcome, Football Manager may have to follow suit.

If Manchester United are unsuccessful, it could result in games such as Pro Evolution Soccer being able to use the real names of football clubs without needing to obtain a licence from the club.