Panini Cheapskates, the Oxford based creators of the 2014 viral improvised Panini sticker replacements, have recently been under the spotlight once again; however this time, for the alleged infringement of Manchester United’s trade marks.
Borne from the monumentally difficult task of completing the official Panini sticker album during the 2014 World Cup, Alex and Sian Pratchett (the couple behind Panini Cheapskates) began creating their own “wonky drawings” of player stickers comprising the album in the absence of attaining the official versions. They decided to repeat the feat in 2018, which has ultimately resulted in Premier League club Manchester United claiming infringement of their marks; on Twitter, the Pratchetts wrote “Man Utd got in touch and made us stop selling our wonky drawings of their ex-players”.
Further elaborating on the issue, a club spokesman told the BBC, “Permission to use Manchester United’s intellectual property is only granted to official licensees, partners and sponsors of the club. Because Panini Cheapskates’ items featured the Manchester United word mark, they unfortunately infringed those intellectual property rights.”
Section 10(3) of the Trade Marks Act prohibits use in the course of trade of a sign which is identical or similar to a mark with a reputation in the UK which would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark. Essentially, this provision seeks to protect the repute, investment and image associated with an established mark. Parodies generally work by evoking a connection with an earlier mark, taking advantage of that mark’s established reputation, and often manipulating the mark to communicate an idea or message which could be harmful or undesirable to the trade mark owner. In this instance, albeit humorous, the parodic use of Manchester United mark is one which is unlicensed; therefore Panini Cheapskate’s use of such falls foul of Section 10(3) in that it takes unfair advantage of the distinctive character and repute of the mark.
Whereas parody can be a fair use exception to copyright infringement in the UK and EU, currently there is no similar defence for trade mark infringement in the same (see: Do we need a parody exemption in UK and EU trade mark law?). As such, Panini Cheapskates have taken the prudent approach of removing their home styled version of the Manchester United badge and renamed the club “Man Red”; a decision similar to that taken by numerous unlicensed football video game franchises in the past. Further to this, they have decided to relaunch collections of their stickers as a charity item, which now includes well known stars such as “Ray Wooney” and “Spark Youse”.