Manchester United Football Club (MUFC) has settled a trade mark dispute with games developer and publisher SEGA over the use of the club’s name and crest in the popular ‘Football Manager’ computer game.
Trade Mark
MUFC own the EU registered trade mark for the word mark “MANCHESTER UNITED” and the club crest. The owners of a registered trade mark have exclusive use of the trade mark and have protection against infringement from non-licenced users. This protection extends to use of the trade mark in “computer software” and “pre-recorded games on . . . software”.
Trade marks serve several purposes, one of which is the “guarantee of origin”. For SEGA to infringe MUFC’s trade mark, it has to be proven that the average consumer would think that MUFC was either responsible for the game or had licensed the use of its trade marks within the game.
Football Manager (and its predecessor “Championship Manager”) have been using the name “Manchester United” since 1992. Unlike other football games such as FIFA or Pro Evolution Soccer, Football Manager does not pay for licenses. MUFC claimed that it’s trade mark was being infringed in 2020, nearly 30 years after the first edition of the game was published.
Legitimate Reference
SEGA contended that the use of the club’s name was “a legitimate reference to the Manchester United football team in a football context” and pointed out it had been used in Football Manager since 1992 without complaint. SEGA also argued that it had sent copies of Football Manager to MUFC club officials and players for years and that current manager Ole Gunnar Solskjaer had spoken openly about how he started playing Football Manager when he was a player at the club.
SEGA claimed that preventing Football Manager 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”.
Infringement for Not Using Correct Crest
MUFC also claimed that SEGA infringed its trade mark of the Manchester United logo by not using the official Manchester United crest in the game. Football Manager does not use official club crests in the game. Instead, it uses generic badges that show the colour of a team’s kit (for example, a red and white badge appears beside Manchester United).
MUFC claimed that this deprived it of its right to have the club crest licensed. Lawyers for MUFC put forward a novel argument claiming that “Consumers expect to see the club crest next to the name Manchester United… and this failure to do so amounts to wrongful use”.
SEGA argued that the Manchester United simplified logo is one of 14 generic logo templates, and clearly indicates that the use of the logo of Manchester United is not licensed by the claimant.
Settled
MUFC announced that the Club and Sega have “agreed a settlement to amicably resolve their trade mark dispute relating to Football Manager”. The settlement will see “Manchester United” renamed to “Manchester UFC” or “Man UFC” in the next edition of Football Manager.
SEGA released a statement saying that the matter had been resolved on a “no-admission basis” and that it does “not need a licence to use the ‘Manchester United’ name but have made the change as a gesture of goodwill so that both parties can move on”.
Conclusion
Intellectual property (IP) rights such as trade marks are important assets for all organisations, including sports clubs. Sports clubs should identify and protect their IP to profitably exploit their legal rights and to protect against infringement. To read more about how you can protect your club’s intellectual property rights, read our guide here or reach out to your usual William Fry Contact.
Contributed by Stephen Dawson
