Manchester City settle trade mark infringement dispute with Superdry over training kit partnership with Asahi
What’s happening?
We all love our football, and our beer, so the dispute involving Asahi and Superdry caught everyone’s attention! But just as things were getting interesting, Manchester City settled a dispute with British clothing brand Superdry before the High Court trial, at which it was due to defend itself against trade mark infringement claims, began.
Early last year, Superdry brought a High Court claim alleging trade mark infringement and passing off by the display of Japanese beverage brand Asahi’s non-alcoholic offering (Asahi Super Dry 0.0%) on the club’s training kit for the 2023-24 season. The brand logo was displayed as ‘Super “Dry” Asahi 0.0%’.
Asahi Super Dry is the official beer partner and training kit partner of four City Football Group (CFG) clubs, including Manchester City. The training kit sponsorship arrangement with Manchester City was announced in July 2023, expanding the brand’s collaboration and integration with the club.
Superdry alleged that differences between its brand name and Asahi’s use of Super “Dry” were “so insignificant that they may go unnoticed by the average consumer”. They argued that the use of the Asahi logo was “liable to deceive” members of the public into a mistaken belief that it was designed, linked to or sold by the clothing brand. They requested an injunction to refrain the club from using the name and sought costs.
Sadly, this all settled on the steps of the court, just as we were handing round the half-time oranges and looking forward to seeing how it would all pan out. Superdry would have needed to produce evidence showing the strength of its reputation and the goodwill in the brand name (‘Superdry’ / ‘SuperDry’) and its relevant trade marks. It would also have needed to show that by using ‘Super “Dry”’, the club was using a sign that was identical or similar to the trade mark(s) it sought to rely on and that such use took unfair advantage of, or was detrimental to, the distinctive character or the repute of their trade mark(s).
Why is this important?
A determining factor would have been whether the public would have seen the Asahi branding on the training kit and associated this with, or in their confusion believed the logo was as a result of a partnership with, the British clothing brand.
Another key factor would have been the fact that the latest arrangement between the club and Asahi ventured into clothing, whereas the collaboration had previously appeared to be more focused on marketing campaigns and digital and in-stadium advertising.
Clothing appears to have proved too close for home for the British brand, for which it has primarily built its reputation and is best known for. It is also worth noting the backdrop that the football club has continued to post record commercial revenues year-on-year since the pandemic and this may have posed a significant threat, if left unchecked.
Interestingly, the club’s training kits for this season still feature the ‘Asahi 0.0%’ branding but were launched with a logo that no longer includes the words “Super Dry”. Perhaps this was the first indication of a pre-emptive climbdown by the club.
What should you do?
It’s a timely reminder for all parties wishing to explore new opportunities related to the use and licensing of IP (whether existing or new) to perform thorough due diligence, including undertaking searches of the relevant trade mark registries in the territories being targeted.
Disclaimer
This information is intended for general informational purposes only and does not constitute legal advice. We recommend seeking professional advice before taking any action on the information provided. If you would like to discuss your specific circumstances, please feel free to contact us on 0800 2800 421.
