In Manchester United Football Club Ltd v. Sega Publishing Europe Ltd & Anor  EWHC 1439 (Ch), Man Utd unsuccessfully sought to amend its claim in a trade mark infringement and passing off claim brought against Sega in respect of its highly successful game, Football Manager (the “Game”). The existing claim alleges trade mark infringement and passing off by use of the sign ‘MANCHESTER UNITED’ within the Game and, also, more unusually, trade mark infringement because of the absence of Man Utd’s club crest in the Game. Those allegations are defended.
In its application, heard by Mr Justice Morgan, Man Utd sought to introduce a new claim under article 10 of the European Union Trade Mark Regulation (the “EUTMR”). This is based on the use by gamers of ‘mods’, provided by third parties. The particular complaint made was that when certain mods are used with the game, this enables gamers to display the Man Utd club crest within the game, leading to a risk of an unspecified infringement under article 9 of the EUTMR.
In his judgment, handed down on 4 June 2020, Mr Justice Morgan dismissed the application. He found that, even on a generous reading of the pleading, the only ‘risk’ alleged by the amendment was that gamers would use mods with the Game. He concluded, however, that such use would not be in the course of trade and so would not amount to an infringement under article 9 of the EUTMR.
Roger Wyand QC and Jamie Muir Wood, instructed by D Young & Co LLP, appeared for Sega, the successful respondent to the application.