Protection and Exploitation of a name using Trademark Law: Jose Mourinho

A trademark is reportedly holding up the appointment of Jose Mourinho at Manchester United. In an unusual situation, the media have suggested the deal is being delayed because Chelsea Football Club own, amongst others, the European Trademark to the name ‘Jose Mourinho’ in five classes of goods, which runs until 2025. Of course, Jose still has the right to use his own name but Chelsea own the rights to using his name or image on certain items; effectively merchandising rights which Chelsea retain and presumably continue to profit from.

So, if the reports are true, what’s the issue? Trademark registration protects your brand and provides you with the tools to prevent someone using it and riding off the back of your business. Jose Mourinho’s name is a valuable asset to his football clubs – former, current and future. Chelsea continue to sell an array of products bearing his name and signature including mugs, posters and phone cases, albeit at a discounted price; but nonetheless, Mourinho has a global profile and Chelsea can still potentially earn considerable money from these rights.  If United had a brand of clothing or a mug, for example, with Mourinho’s name on it, this would be a breach of the trademark that Chelsea currently own, and if they didn’t grant a license to United, every time Jose Mourinho’s name was used in a commercial capacity with those products Chelsea could bring an infringement action against Manchester United.

It is interesting, and unusual, that Jose doesn’t own the rights himself to these particular marks, through one of his companies; he could then protect his name, and license those rights to whichever club he chooses; this would not only help smooth negotiations, but could also prove quite lucrative. This really shows the importance of properly protecting your assets, and although many trademark owners will not have names or taglines with the celebrity status and profile of Jose Mourinho, it demonstrates the ever-growing importance of a brand and the potential for exploiting it commercially.

Many will know that Mourinho has managed Inter Milan and Real Madrid since the registration of the trademark; we wonder whether the Italian and Spanish clubs found a way around the issue?  Options that the parties might consider now include:

  • United could ask Mourinho to buy the trademark, or indeed Mourinho could volunteer to do so, although this could prove expensive; had these been registered directly, it could not only have avoided this reported hold up in negotiations but may also have been quite profitable.
  • United could simply not use Mourinho’s name on the list of goods that are registered in Chelsea’s name. This could mean United forgo a huge sum of potential revenue for their merchandise sales – perhaps unlikely!
  • United could challenge the trademark if they can show it is not being used by Chelsea, but given the continuing use of the name on Chelsea’s merchandise, we imagine this also to be unlikely.
  • United could agree to pay a license fee so that they can use Mourinho’s name on United club merchandise. This could be worth hundreds of thousands of pounds, but might inevitably be worth the investment.

In reality, this issue if indeed true will not ultimately scupper negotiations; it is likely that Mourinho will either buy back the rights in his name for these classes of goods, or United will be granted a license from Chelsea to use them.

The message, of course, is that even if you don’t have superstar status or benefit from a household name brand, every business does have a name, a brand and often a tagline or other elements which customers associate with them which, of course, they would not want to be associated with anyone else, not least a competitor!  This might be something as broad as a bright colour, in the case of a well-known budget airline, or a symbol such as Nike’s swoosh mark but whatever it is, considering how best to protect your business name, tagline or anything else that you regularly should at least be considered, to make best use of your business’ assets.

If you would like to discuss protecting your brand, require further information on trademark registration, or if you already own a registered mark with a view to licensing it or exploiting it in some other way, please do not hesitate to contact Nicola Telford in our Commercial team on 01935 385963 or Nicola.telford@solicitorstitle.co.uk

This article is intended for general information purposes only and does not intend to provide legal advice and should not be used as such. As every matter is different, if you would like specific advice about your own circumstances, please contact us direct.

Posted: 27/05/2016
Categories: News