Sega’s early win against Man Utd in Football Manager trade mark case

In August 2018, Manchester United FC brought trade mark infringement proceedings against Sega (the publisher) and Sports Interactive (SI) (the developer), in relation to the Football Manager[1] video game series.

The claims included the use of the club's name without a licence, and interestingly not using the club crest when consumers would have expected to see it.

After almost a year-long stay of proceedings to try and reach a settlement, the case was thrust back into the spotlight in recent weeks, as the Court heard Man United's application for permission to amend its claim.  The new claims relate to Sega and SI's alleged liability for "acting in common design" with third parties to provide "patches" for Football Manager – i.e. downloadable files containing content that should be licensed such as player images, club logos and crests (which are trade marked).  When a user downloads a patch, they can essentially upgrade their game and play it as though it had been fully licensed by the relevant rightsholders.  The application failed – and this article explores why it failed and considers the underlying trade mark action.  More specifically, it looks at:

• the registered trade marks that Man United seeks to rely on
• the alleged infringements (use of club name and removal of club crest);
• Sega and SI’s defence; and
• the recent judgment on Man United’s application to amend their claim.