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How Manchester United tackled Chelsea for the trade mark “Jose Mourinho”

Posted by , Senior Associate

In the run up to Euro 2016, with England fans once again daring to dream of glory on the international stage, the football story dominating the headlines was Manchester United‘s search for a new manager, and the eventual appointment of Jose Mourinho. Catching the attention of intellectual property lawyers was the delay caused by the revelation that Chelsea owned various trade marks for the name “Jose Mourinho”, Jose having served as Chelsea manager from 2004 to 2007 and 2013 to 2015.

It isn’t uncommon for sports stars, and other high profile celebrities, to register their names as trade marks (Rory McIlroy and David Beckham for example). It is unusual however for the trade mark to be owned by a third party, as was the case with “Jose Mourinho”. Registering a trade mark is a sensible way for any business (or individual) to protect their brand as it offers enhanced protection against third parties using the brand without permission, such as counterfeiters.

Chelsea’s ownership of the trade marks for “Jose Mourinho” presented Manchester United with significant commercial challenges. If no deal was struck with Chelsea, Manchester United would be unable to use their manager’s name in relation to goods and services protected by the trade mark. Given Manchester United’s commercial success and the importance to the club of sponsorship deals, such a situation must have seemed unpalatable.

As we know, Jose was appointed by Manchester United, but the terms of the agreement to solve the trade mark issue were not revealed. There are a number of possible answers:

  • Chelsea granted Manchester United a licence to use their “Jose Mourinho” trade marks, perhaps in return for royalty payments;
  • Manchester United or Jose agreed a deal with Chelsea to purchase the trade marks by way of assignments;
  • Manchester United have decided not to use “Jose Mourinho” in relation to the goods and services protected by Chelsea’s trade marks (this seems unlikely);
  • Manchester United or Jose challenged Chelsea’s trade marks, seeking for them to be declared invalid and settled with Chelsea, whereby Chelsea permit them to use the trade marks.

The slightly bizarre situation serves to highlight the power of a trade mark owner and is a timely reminder to brand owners to make sure that their brands are sufficiently protected.

For more information and advice on trade marks and intellectual property please contact James Worrall or another member of our Technology & Media team.

01225 730 170     Email usjames.worrall@roydswithyking.com

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