In May 2016 Jose Mourinho was named as the manager for Manchester United Football Club. During this announcement, it was revealed that his name is a trademark owned by his former club Chelsea Football Club (Chelsea). This was reported to be a stumbling block which delayed the signing with Manchester United. In the age of global celebrities, such a situation provides a useful lesson on the management of personal brands.
Chelsea Football Club and JOSE MOURINHO Trademarks
Last summer Mourinho ended his second stint as Chelsea manager, the first stint running from 2004 – 2007. In the middle of the first period, Chelsea registered a number of trademarks for JOSE MOURINHO in the United Kingdom, at the EUIPO and in the United States. A number of the registrations owned by Chelsea remain active – for instance, an EU trademark in classes 21 (domestic utensils and containers) and 28 (games) is not due for renewal until June 2023.
The JOSE MOURINHO Brand
Mourinho is in a relatively unique position. The self-proclaimed “special one” has developed a marketable brand in a way that few other managers achieve, and a quick search of trademark registrations on TMview (TMview is an online consultation tool allowing free of charge trade mark searches. It includes all types of trademarks present in the official databases of the participating EU Trade Mark Offices, the OHIM and WIPO) suggests that no other current Premier Football League manager has registered a mark for their name in Europe.
Equally unusual though, is the approach taken by Mourinho with respect to ownership of his name. Rather than register it himself, and license it out, he allowed Chelsea to become the registrant. This has put Mourinho in the position where he has had to negotiate use of his own name on more than one occasion.
Mourinho’s previous club, Chelsea, held all the aces in a negotiation, which left Mourinho’s current club, Manchester United, with limited options. Manchester United could not use the JOSE MOURINHO name against the exhaustive list of items that Chelsea have registered. The items ranged from umbrellas to watch straps, from lingerie to talcum powders.
Additionally, Manchester United had to pay Chelsea for a license so they could use Mourinho’s name on club merchandise. They did have the option of asking Mourinho to buy the trademark back but that might have turned out to be too expensive a venture for the “special one”.
Licensing the JOSE MOURINHO Trademark
However, licensing was not a preferred solution in this case because if a license could not be agreed upon it would have had a major impact on the club’s commercial activities in respect of any goods or merchandise covered by the JOSE MOURINHO trademark.
Generally, any unlicensed use of a registered mark which incorporates a name such as JOSE MOURINHO for goods or services that are covered by the trademark would amount to registered trademark infringement and potentially breach of license. This would entitle the owner of the trademark to issue proceedings and to seek relief from the court including injunctive relief, damages or an account of profits arising from the infringements.
In circumstances like these, the contract becomes all important. To avoid similar situations. parties should envision clauses that would help them navigate the commercial landscape post termination of the managerial contract. Provisions dealing with existing merchandising contracts that utilize the manager’s name or likeness should be made time bound and consent based. These provisions should be carefully drafted for their nature would be at the center of trademark negotiations.
And as between Manchester United and Chelsea it is reported that Chelsea ultimately got a multi-million pound settlement fee. However, this is an atypical situation, and the parties involved were able to find a solution primarily because of the reputation and financial might of these Football clubs. These deep-pocketed Football clubs can afford to spend money on legal fees and/or licensing fees to use the trademark. Generally, for smaller companies or ones not so financially able, the whole process would be extremely costly and challenging.
During the lifespan of Chelsea’s JOSE MOURINHO’s trademark registration, Mourinho has managed other Football clubs in Europe such as Inter Milan and Real Madrid and the trademark issue has been negotiated successfully before and even for Manchester United, it did not end up being a deal-breaker.
However, in an ever-expanding global market where having a personal brand is invaluable, it provides a useful lesson on the management of related rights.