The recent appointment of Jose Mourinho as Manchester United Manager was, in the eyes of many, an inevitable move by the Old Trafford club. However, in the midst of contract discussions it emerged that Chelsea, his former employer, owns the Mourinho trademark portfolio.
This includes registrations for ‘Mourinho’, ‘Jose Mourinho’ and his signature covering various goods and services, for example scarves and rucksacks. While this unusual situation did not scupper the deal, it held up negotiations at the final hour and sends out some important messages.
A number of high-profile sports stars have successfully registered their names as trademarks, including Rory McIlroy, David Beckham and Roger Federer to name a few. Sports personalities can and have also registered nicknames (for instance, “Gazza” by Paul Gascoigne); slogans, as was the case with John McEnroe’s “you cannot be serious” catchphrase; and their images – Alan Shearer, registered his photograph for goods such as posters. Many will also remember Gareth Bale’s audacious attempt to trade mark his ‘eleven of hearts’ goal celebration, which was subsequently abandoned.
Although an individual will usually own the trademark for their own name, there is no free-standing right to personality in the UK, and therefore no presumption that only a celebrity can apply to register their name. The situation with the Mourinho trademarks is certainly anomalous, but it is not the first time a football club has registered marks for a famous player or manager. Whilst Mourinho labels himself as “The Special One”, Liverpool Manager Jürgen Klopp famously described himself as “The Normal One” when he was appointed in October last year and Liverpool FC successfully registered this as a European Trade Mark in May 2016. Manchester United also held a registration for “Cantona” until June 2006.
Attempts by third parties to register famous names can be opposed on certain grounds, including trademarks applied for in bad faith or those likely to deceive the public. For example, the day after Andy Murray famously triumphed at Wimbledon, trademarks were filed for “Andy Murray, Wimbledon Winner” and “Andy Murray, Tennis Champion” by an unknown individual. These registrations were subsequently refused, but it illustrates the risk to sports stars of their names being registered by third parties.
A registered trade mark is a valuable asset, and in this situation has given Chelsea commercial leverage. The details of the agreement reached between Manchester United and Chelsea have not been released, but United’s primary options would have been:
1. To take a licence from Chelsea in exchange for paying a licence fee;
2. Request an assignment of the marks, either directly to Manchester United or to Jose Mourinho;
3. To not sell Mourinho merchandise covered by the trademarks (and sacrifice a significant revenue stream); or
4. Challenge the validity of Chelsea’s trademark registrations.
A failure to address this situation would leave Manchester United at risk of trademark infringement every time certain goods bearing Mourinho’s name or signature were sold.
The ‘own-name’ defence
Although Jose Mourinho has seemingly been willing to relinquish control of the trademarks, he can still rely on the “own-name defence”. This provides an exception to infringement for those using their own name in accordance with honest practices. Accordingly, if Chelsea sued Jose personally for selling Mourinho-branded goods – admittedly an unlikely scenario – he could defend the claim on this basis.
The situation which has unravelled with Jose Mourinho serves as a warning that if a high-profile individual does not register a trademark to protect their image, someone else might. This can have knock-on implications when it comes to agreeing commercial terms, particularly in the sports industry where exploitation of image rights carries such significant value.
First published in SportBusiness, May 2016