Superdry v Manchester City FC: Trade Mark Infringement Claim

Superdry recently issued a trade mark infringement and passing off claim against Manchester City Football Club (“MCFC”) in relation to MCFC’s use of the sign ‘Asahi Super “DRY” 0.0%’ on its training kits.

While this dispute is at its early stages, this blog will focus on Superdry’s trade mark infringement claim and explain how individuals and businesses can avoid such claims in the first place.

Background

Superdry, the well-known clothing brand, own a number of trade mark registrations for the mark ‘SUPERDRY’ (“Superdry Marks”) in class 25 for clothing, t-shirts, short sleeved and long-sleeved t-shirts, zip tops and printed t-shirts.

Prior to the start of the 2023/2024 football season, MCFC and Asahi – the Japan-based brewery company – agreed a sponsorship deal whereby MCFC would promote Asahi’s non-alcoholic drink branded ‘Asahi Super “DRY” 0.0%’ (“Sponsor Sign”) on its training kits (“Kits”). The Kits were worn by first team players in training and replicas were also available for consumers to buy online. Below is a depiction of the Sponsor Sign in its non-stylised form.

The Claim

In December 2023, Superdry issued a claim against MCFC in the Intellectual Property List of the High Court. Superdry’s trade mark infringement claim relies on all three trade mark infringement grounds, which are set out below.

1. That the sign in question is identical to the Superdry Marks and the goods and services are identical.

In terms of the first ground, Superdry argued that the differences between SUPER “DRY” and SUPERDRY are so insignificant that they may go unnoticed by the average consumer and that the goods in question are the same (clothing, zip tops etc).

2. That the sign in question is identical/similar to the Superdry Marks and the goods and services are identical/similar to the Superdry Marks, and there exists a likelihood of confusion on the part of the public.

Under the second ground, one of Superdry’s points was that all aspects of the Sponsor sign may not be visible at the same time depending upon factors such as the viewing angle and the physical posture of the wearer. Therefore, the average consumer may only see the sign ‘Super “DRY”’ and not ‘Asahi’, leading to confusion.

3. That the sign in question is identical or similar to the Superdry Marks, and use of the sign, being without due cause, takes unfair advantage of or causes detriment to the distinctive character or the repute of the Superdry Marks.

Under the third ground, Superdry has to prove that the Superdry Marks have a reputation. Superdry relied on the following to prove its reputation:

• Extensive sales channels including its 98 UK stores
• Superdry’s social media presence
• Superdry’s awards and recognition
• Celebrities that have worn and promoted Superdry’s clothing such as David Beckham, Neymar and Kylie Jenner
• Third party collaborations with renowned bands such as Metallica and the Sex Pistols.

Superdry argue, amongst other things, that there is a dilution of the distinctiveness of the Superdry Marks, damage to the reputation of the Superdry Marks, MCFC unfairly benefitted from riding on the coat tails of Superdry’s well known Superdry Marks. In the context of clothing, Superdry alleged that the Superdry Marks could be tarnished if there are complaints relating to the design or manufacturing quality of the Kit.

In terms of the remedies and relief, Superdry have (amongst other things) sought injunctive relief, damages or an account of profits, delivery up or destruction of the Kits and its costs.

Comment

This dispute emphasises the importance of not using signs that are similar or identical to registered trade marks, in the course of trade. A large organisation such as MCFC should normally be aware that Superdry own registered marks for SUPERDRY in respect of clothing goods and have a significant reputation in the UK. It appears MCFC have found themselves caught in the crossfire as they are the sponsored team, while the Sponsor Sign belongs to Asahi.

MCFC have removed the Kits from sale pending resolution of this dispute. Usually, in a trade mark infringement claim, the rights holder alleging trade mark infringement will as a first step send a cease-and-desist letter (or formally, a letter of claim) to the alleged infringer. This letter often encloses undertakings which are terms that the alleged infringer will need to agree to comply with to resolve the matter.

It is likely that removing the Kits from sale is one of the terms of Superdry’s undertakings and MCFC have obliged. By removing the Kits from sale, MCFC reduce their exposure to the amount of damages / account of profits they might be liable to pay as they would no longer be making revenue from the Kits.

Crucially, individuals and businesses should undertake thorough searches on the UK IPO trade marks register and internet searches prior to affixing signs to products, especially signs that sound and look the same as the sign they intend to use, and conceptually mean the same thing. Particular attention should be paid to: (i) marks that have a reputation, even if the goods and services offered are dissimilar; and (ii) marks which are not registered but have been used in trade for a significant amount of time.

MCFC have recently filed a defence to Superdry’s claim, so this matter is likely to develop over the next few months.

If you require assistance with a trade mark infringement claim, whether that be enforcing your trade mark rights against a potential infringement or if you have received a cease-and-desist letter, please get in touch with us and we will be glad to assist you.