Manchester United settle trademark dispute with SEGA – Intellectual Property

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European Union: Manchester United settle trademark dispute with SEGA

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Manchester United Football Club (MUFC) has settled a trademark dispute with game developer and publisher SEGA over the use of the club’s name and crest in the popular “Football Manager” video game.

Trademark

MUFC is the owner of the EU registered trade mark for the word mark “MANCHESTER UNITED” and the club crest. Owners of a registered trademark have exclusive use of the mark and are protected against infringement by unlicensed users. This protection extends to the use of the mark in “computer software” and “games pre-recorded on . . . software”.

Trademarks serve several purposes, one of which is the “guarantee of origin”. For SEGA to infringe MUFC’s trademark, it must be proven that the average consumer would believe that MUFC was responsible for the game or authorized the use of its trademarks in the game.

Football Manager (and its predecessor “Championship Manager”) has used 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 its trademark was breached in 2020, nearly 30 years after the first edition of the game was published.

Legitimate reference

SEGA argued that the use of the club name was “a legitimate reference to the Manchester United football team in a footballing context” and pointed out that it had been used in Football Manager since 1992 without complaint. SEGA also claimed that it had been sending 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 club player.

SEGA claimed that preventing Football Manager from using the Manchester United name “would amount to an unreasonable restriction on the right to freedom of expression to restrict the use of the words ‘Manchester United’ to refer to a team in a video game” .

Infraction for not using the correct crest

MUFC also claimed that SEGA infringed on its trademark Manchester United logo by not using the official Manchester United crest in-game. Football Manager does not use official club crests in-game. Instead of that, it uses generic badges that show a team’s kit color (for example, a red and white badge appears next to Manchester United).

The MUFC claimed this deprived him of his right to have the club crest dismissed. Lawyers for MUFC have advanced a new argument claiming that “consumers expect to see the club crest next to the Manchester United name…and failure to do so amounts to unlawful use”.

SEGA submitted that the simplified Manchester United logo is one of 14 generic logo designs and clearly states that use of the Manchester United logo is not authorized by the claimant.

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The MUFC has announced that the Club and Sega have “agreed to an agreement to amicably resolve their trademark dispute regarding Football Manager”. The settlement will see ‘Manchester United’ renamed ‘Manchester UFC’ or ‘Man UFC’ in the next edition of Football Manager.

SEGA released a statement saying the case was resolved on a “no admission basis” and that it “does not require a license to use the name ‘Manchester United’ but has made the change as a gesture of goodwill so that both parties can move on”.

Conclusion

Intellectual property (IP) rights such as trademarks are important assets for all organisations, including sports clubs. Sports clubs need to identify and protect their intellectual property in order to profitably exploit their legal rights and protect themselves against infringement.

Contributed by Stephen Dawson

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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