Manchester United Football Club Ltd v Sega Publishing Europe Ltd & Anor

Preparatory acts fall within Article 10 only where there is a risk that the marked means will later be used in relation to goods or services in a way that would infringe Article 9. A risk of private, non-commercial use by ordinary consumers is insufficient. A pleading must identify the relevant risk and distinguish clearly between an alleged Article 9 infringement and an alleged Article 10 infringement. A common design to commit preparatory acts under Article 10 is not necessarily a common design to commit the different acts constituting an Article 9 infringement.

The claimant sought permission to amend its trade mark infringement proceedings against the defendants, publishers and developers of the Football Manager video game. The proposed amendment alleged that third-party providers supplied patches containing the claimant’s crest and that the defendants were jointly liable with a patch provider for infringement under Article 10 of Regulation 2017/1001/EU.

The application was opposed on the grounds that the proposed claim had no real prospect of success and that amendment would cause case-management prejudice. The central issues were whether the pleaded facts disclosed the necessary risk of downstream infringement under Article 9 and whether the pleading adequately alleged a common design.

1. Application refused. Permission to amend was not granted because the proposed pleading had no real prospect of establishing infringement under Article 10 of Regulation 2017/1001/EU.
2. Article 10 concerns preparatory acts. It requires an act of affixing a sign to packaging, labels, tags, security or authenticity features or devices, or any other means, or dealing commercially with such marked means. At the time of the relevant preparatory act there must be a risk that the marked means will be used in relation to goods or services and that the downstream use would infringe Article 9.
3. The existence of a risk means that complete certainty about subsequent use is unnecessary, and the risk may exist even if the downstream use never occurs. But the risk must be a risk of conduct amounting to an Article 9 infringement. The pleaded case identified use by gamers of modified software. As pleaded, ordinary gamers were private users and their use was not in the course of trade. That did not provide the necessary risk.
4. If the claimant intended to rely on a special class of gamers who used the mark commercially, it needed to plead the essential facts of that alleged trade. It also needed to address whether the relevant use related to goods or services identical or similar to those for which the mark was registered.
5. The pleading alleged a common design concerning acts said to infringe Article 10. It did not clearly allege a common design to commit the different acts constituting an Article 9 infringement. The court would not recast the pleading into that different case, particularly where the claimant had confirmed that it was not alleging an Article 9 infringement by the patch provider.
6. The judge’s observations on joint tortfeasor liability were unnecessary to the result. Applying the principle stated in Fish & Fish Ltd v Sea Shepherd UK [2015] AC 1229, facilitation alone is insufficient; liability requires furtherance of the tort in pursuance of a common design to do or secure the acts constituting it. The issue is fact-sensitive. Had an arguable Article 10 infringement been pleaded, the common-design allegation would probably have required investigation at trial.
7. Case-management objections would not independently have justified refusal. The existing claim would remain, the action had not progressed to a case management conference or trial directions, and any additional work caused by a properly pleaded new claim would have been limited. Any further amendment would require a fresh application notice.

First-instance decision. The judgment does not state any earlier appellate decision.