José Mourinho has signed up as the next manager of Manchester United, but the delay in the negotiations this week was caused in part by an issue of trade mark ownership, when it came to light that Mr Mourinho did not in fact own the trade marks for his own name and signature. Instead, these are owned by Chelsea Football Club.
It is an unusual situation for José Mourinho to not have control over trade marks for his own name. David Beckham owns his trade marks for DAVID BECKHAM and trade marks for WAYNE ROONEY are owned by his management company. However, the trade marks for JOSÉ MOURINHO and his signature are all in the name of Chelsea Football club, having been filed during either his first stint with the club, 2004 – 2007, or his second stint from 2013 – 2015. Surprisingly, there are at least nine formal registrations for the name in the UK, EU, US, Japan, China, Norway and Australia.
We do not yet know how Manchester United have resolved the ownership issue, but a solution was inevitable. Ignoring the ownership issue could have meant that Manchester United ran the risk of infringing the trade mark registrations if they tried to use the JOSÉ MOURINHO name on any of the merchandising goods covered by those marks. José Mourinho himself would be able to use the name due to an ‘own-name’ defence, but that would not get Manchester United out of trouble.
Manchester United have a number of options, including paying Chelsea for a licence to use the trade marks although that would seem to be an unpalatable option, or buying the marks back from Chelsea. Alternatively, Manchester United could challenge the validity of the registrations, either by forcing Chelsea to prove that they have used the trade marks properly, or by putting forward a case that the trade marks are misleading if they remain in the hands of Chelsea because Mourinho has very publicly moved to Manchester United. Either way, Chelsea may not be able to use the trade marks now. Arguably for Chelsea to use the trade marks would be to attempt to deceive people into thinking that José Mourinho had any kind of link to the products or merchandise with his name on, when he does not actually do so because they are Chelsea’s products or merchandise.
This area is complicated because it is not unusual for football clubs to continue offering merchandise containing the names of famous players after the players have left the club. It is often a fine line between merchandise being deemed to be merely representing the historical fact that a player, and sometimes a manager, has represented a club in the past and an indication that the player or manager has approved the products in question. This “badge of allegiance” argument, i.e. that supporters buy merchandise not caring whether or not its origin is the club as long as it contains reference to the player. This has been run in the past by unauthorised sellers notably in the Arsenal and Reed case where it largely failed on the facts. So, the cases are pretty fact dependent and will also need to take into account the fact that protection will likely not be afforded under a trademark to goods which are deemed to be mere image carriers as Sir Alex Ferguson discovered when a trade mark application for his name was refused in relation to certain goods such as posters and football stickers.
The moral of the story here is to ensure that your trade marks and other IP Rights are in the correct ownership, and if they are not arrange to have them transferred, because ownership is vital when it comes to enforcing or exploiting your IP Rights.
If you wish to discuss any of the issues raised above, please contact Simon Miles – Head of Intellectual Property, Clare Grimley – Associate, or any member of the Edwin Coe Intellectual Property team.
If you aren’t receiving our legal updates directly to your mailbox, please sign up now
Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.
Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.