DHK Retail Ltd. & Others v City Football Group Limited [2024] EWHC 3231 (Ch)

The issue:

Was the promotional branding of Asashi Super ‘Dry’ 0.0% lager (City’s sponsor) confusing with the SuperDry clothing brand (not City’s sponsor). One party wanted mediation, the other didn’t.

The Debate

As part of the pre-trial review (the case was under the Shorter Trails Scheme) of the trademark dispute, one party (SuperDry) made an application for compulsory mediation. It was resisted.

The jist of arguments in favour made by Superdry were:

a) the sea-change of approach of the courts to ADR following Churchill and changes to CPR in October 2024;

b) ensuring court resources are properly allocated for all court users (ie, freeing up court time where possible);

c) Court should use its discretion to order a mediation where a dispute was capable of resolution, not particularly complicated and had variables in the dispute capable of being compromised that a Court would not be able to order (things like any agreement on changes to logo).

d) the parties next steps to prepare for battle would incur hundreds of thousands of pounds of costs.

The jist of Manchester City's arguments were:

a) The Court should only order compulsory mediation where there was a prospect of settlement, and that wasn't the case here since both parties wanted a determination.

b) A party is entitled to a judicial determination.

c) The application came very late in the day and the parties had already spent a fortune.

d) The trial was imminent and there was little availability left in calendars to facilitate mediation.

The Result

The Judge (Mr Justice Mills) recognised that parties are often poles apart but agreed that mediation “is capable of cracking even the hardest nuts” and said, “there may be solutions other than yes or no”. He commented that "everything would be up for grabs in a mediation" which wouldn't be the case via a judicial determination.

He wasn't even swayed by the late in the day argument. He saw it as a good time for mediation as the parties positions had been crystallised and "the purpose of mediation is to remove roadblocks to settlement."

Mediation was ordered to take place in December 2024 and the parties to then report back to Court.

So, the parties pop off to compulsory mediation, and would you Adam and Eve it? They reported back to court on 13 January 2025 that they had settled.

Then mediators got a bit smug and said, “I told you it works”. (The last bit might just be me).

Then Manchester City considered all their other legal battles and wondered if they should consider mediation for those. (I hope they did this.)