The appointment of football manager Jose Mourinho to his new position at Manchester United (MUFC) was delayed as a result of a personality rights issue involving the “Special One” and his former club, Chelsea FC. It arose because Chelsea FC still owned the trade mark registered in respect of Mourinho’s name, which posed a number of problems in relation to the negotiation of certain aspects of his contract with MUFC.
Rather than registering his own name as a trade mark and then licensing its use to Chelsea FC for the duration of his two terms as manager at Stamford Bridge, Mourinho allowed the London club to become the registered owner of the rights; this left him in the unusual, but not unprecedented, position of having to negotiate the use of his own name.
In 2009 a similar case arose when designer Elizabeth Emanuel attempted and failed to prevent the company to which she assigned rights in respect of her name from subsequently using the trade mark when her affiliation with the company came to an end. In Mourinho’s case, the conflict didn’t prove to be as fatal.
The filing for registration of Mourinho’s name was made by Chelsea FC in 2005 and is next due for renewal in 2025. The registration of his signature was filed a year later and appears to have expired earlier this year. His name is currently registered in the UK, the EU Intellectual Property Office (EUIPO) and the US and is registered for five classes of goods. These things clearly matter a great deal at Chelsea FC, which is listed as the owner of 175 trade marks including former player, “Fernando Torres”, current owner, “Abramovich” and another former manager, “Ancelotti”.
In the period between his two terms at Chelsea FC, Mourinho managed clubs Internazionale and Real Madrid seemingly without any problems arising from exploitation of the relevant rights, and so the conflict was seen as an inconvenient delay in negotiations rather than a complete breakdown. The parties have now reached an agreement that has enabled the completion of Mourinho’s contract with MUFC.
This case provides a clear warning for parties entering all kinds of agreements that contain IP provisions. Had the situation not been resolved, it would have presented an impediment to normal commercial activities that involved the use of Mourinho’s name. To avoid any possible future conflict, a clause should be inserted into a contract that creates a run-off provision with regard to merchandising agreements that involve the use of a name or likeness. It is also advisable that registration of a name be made by the person in question and its use licensed to another party, instead of the other way around. A prime example of this is the trade mark of the name of former MUFC manager, Sir Alex Ferguson. This trade mark is not owned by MUFC but by Sir Alex himself, automatically eliminating any potential problems of this kind.
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Contributed by David Cullen
