Why Man City took ‘Super “Dry”’ off its Training Kit
While the football world waits “patiently” for updates on the Premier League’s 115 charges against Manchester City, there has at least been some good news for the club. It was shortly due to participate in a trial in the High Court defending itself against trade mark infringement claims brought by the British Superdry clothing brand. The FT however has reported that the dispute has now settled.
The dispute centred around Manchester City's recent partnership with prominent Japanese beer brand Asahi positioning its 0.0% alcohol Super “Dry” offering as the club's new training kit sponsor. The sponsorship, first announced in June 2023, was supposed to mark a significant shift in Manchester City's commercial strategy, aligning with Asahi's global brand presence and expanding the club's international appeal. Unfortunately for the club, the clothing brand were not happy with the announcement and complained of trade mark infringement and passing off, reportedly applying to the Court in December 2023 for remedies including an injunction to address the alleged infringement.
The key issue was whether the branding appearing on the footballers’ kit was likely to be seen by the public as branding denoting the Superdry brand or as branding denoting Asahi Super “Dry” 0.0%.
As we understand it, the club were not at any stage selling the shirts featuring the ‘Super “Dry”’ branding to consumers and were only using them for their own training sessions. So, that would have made Superdry’s claims harder to make out; they could not say to Man City “we have a registration for ‘SUPERDRY’ for clothing and you are selling clothing with ‘Super “Dry”’ on them”. In addition, Superdry do not have a UK trade mark for beer (which is after all what Man City and Asahi were promoting) while Asahi do have one, which dates back to 2013.
So, observers may be forgiven for questioning the strength of Superdry’s case.
We have not seen the court papers but it is likely that Superdry will, in addition to other trade mark and IP claims, have alleged infringement under section 10(3) of the Trade Marks Act 1994. That section is often relied upon because it can found an action for infringement even where the goods and services for which the claimant’s mark or marks are registered (for example clothing) are dissimilar to those for which the defendant is using its mark (here, beer, or non-alcoholic beer). The claimant needs to show, among other things, that its mark or marks (including in this case, ‘SUPERDRY’) have a reputation and also that, without due cause, the defendant has, by its own use of a similar or identical sign (in this case, ‘Super “Dry”’) caused one or more of the following types of injury: (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark.
The British brand has ‘SUPERDRY’ registrations that are older than Asahi’s and we can assume that it is able to demonstrate that it has built up considerable reputation, and goodwill, in respect of its clothing in the UK. At the same time, the Man City sponsorship was of course, as a training kit partnership, linked closely to clothing – for which the ‘SUPERDRY’ brand and mark are best known. No doubt, this led the club to focus on settling the dispute.
The first obvious sign of a climbdown was that the club’s training kit for the players at the beginning of this 2024/25 season no longer featured the words ‘Super “Dry”’, instead simply referring to ‘Asahi 0.0%’. While the terms on which the parties have now finally settled their dispute and the High Court proceedings are confidential, Superdry’s priority will have been to stop the promotion of ‘Super “Dry”’ beer on clothing and we know they have achieved that.
The case underlines the importance for clubs and others of thorough due diligence in their commercial partnership negotiations. Often, a club’s key legal concerns will be on the reputation of the potential partner, and on its solvency, but this matter underscores the importance of IP too. Clubs can of course get IP warranties and indemnities in place but can also conduct their own trade mark searches to give themselves greater peace of mind.
