José Mourinho was recently confirmed as the new Manchester United manager as may well know. During the negotiations, it was confirmed that Chelsea still own trade marks of Mourinho’s name. So what does this mean for Manchester United and Mourinho’s name?…
The mark of a name
José Mourinho is the new Manchester United manager, replacing Louis Van Gaal after he was sacked, despite winning the FA Cup. But before Mourinho signed on the dotted line, it was confirmed that Chelsea still own trade marks of his name.
The club registered both Mourinho’s name and signature in 2005 as Community trade marks, meaning Chelsea own the trade marks and can use them on merchandise. It’s been said the trade mark regarding Mourinho’s signature expired earlier this year. However, the trade mark for his name remains owned by Chelsea and could be until 2025.
Whose name is it anyway?
It’s quite unusual for the trade mark of Mourinho’s name to be held by the club and not Mourinho himself. Usually, it’s the individual that holds the trade mark for their own name. And since Chelsea’s registration of the trade mark, Mourinho has managed Inter Milan and Real Madrid.
These teams appear to have found a way around possible conflicts by potentially either acquiring the rights from Chelsea, or managing the use of Mourinho’s name. It’s clear the trade marks have not prevented Mourinho managing other clubs and it appears the situation has not deterred Manchester United.
The name forecast
Depending on what has been agreed, the options available to Manchester United in respect of the Mourinho trade marks are…
- The trade mark of Mourinho's name could not be used by United against the exhaustive list of items Chelsea have registered — in five categories according to the Intellectual Property Office — from football boots to watch straps, lingerie to calculators, and aftershave to umbrellas
- Chelsea could licence their trade marks to United, for an agreed fee, so they can use Mourinho's name on promotional items and merchandise
- Mourinho, either of his own accord or as asked by United, could look to buy the trade mark back
- If United feel that they could show the trade mark has not been used by Chelsea, they could challenge the trade mark.
United will no doubt have considered these options during the negotiations. Licensing or buying the trade mark could result in large costs being agreed, but the club may have decided they are a necessary or worthwhile investment, so they can sell merchandise using the Mourinho trade mark without being in breach of it.
When dealing with trade marks, it’s important to consider ownership, renewal, and who owns the rights. Our experienced solicitors can give you advice and assistance in all areas and the process as a whole. Whether you need advice on protection or a potential infringement, our team would be happy to discuss and help you with any concerns and/or queries.
If you’d like further information about trade marks or would like to arrange an appointment to see one of our Solicitors, please contact us on 01604 828282 or send us a message via our online service.