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The Special One – Trade Marks and Image Rights

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MourinhoIt has been widely reported in the general press in the last few days that ‘image rights’ issues have delayed the signing of the contract that brought Jose Mourinho to Manchester United as its next manager, following the departure of Louis van Gaal. However, as of this morning it appears that these issues have been overcome with confirmation that Mourinho has signed a three-year contract.

As we know, despite the 2015 Rihanna v Topshop Appeal decision, image rights as such are not protected by the English legal system, and the more discerning IP reporters have probably correctly identified that the tricky point might evolve around the registered trade mark for Mourinho’s name.

Registering one’s own name is one of the forms of IP protection sports personalities often resort to in the absence of legislation that protects their image as an overall concept. Moreover, trade mark registration of a name is the most unequivocal way of securing rights to its use in the commercialization of merchandising items branded with the celebrity’s name.

Mourinho signatureIndeed, the name JOSE MOURINHO, the surname MOURINHO and Jose Mourinho’s signature (see image) are registered trade marks in the UK and in the EU for a wide specification of goods ranging from perfumery articles to DVDs, from clothing to jewellery, from bags to…well… footballs. The surprising thing is that these trade marks were registered not in the name of Jose Mourinho himself, but they are owned by Chelsea FC.

The practical implication of this is that the sale of goods identical or similar to those covered by the above trade mark registrations under the brand JOSE MOURINHO or MOURINHO by Manchester United, any licensee of theirs or by Mr Mourihno himself would constitute trade mark infringement.

The UK Trade Marks Act 1994 does provide a so-called ‘own name defence’ under Art. 11(2)(a), whereby trade mark infringement is excluded when a person is using his or her own name, but with the proviso that this must be in accordance with honest practices in industrial or commercial matters. We believe that the registration of Mourinho’s name by Chelsea FC was consensual and part of his deal with Chelsea FC. Therefore, such defense would not apply.

Some of the trade mark registrations for Mr Mourinho’s name have been granted more than 5 years ago and there may be an argument that they could be vulnerable, in whole or in part, to a cancellation, on the grounds that they have not been put to genuine use by Chelsea FC in the EU/UK for the goods of registration for an uninterrupted period of 5 years. However, Chelsea FC own also EU trade mark registrations that have been granted less than 5 years ago and that,  albeit more limited in scope, would still be a concern to any third party wishing to make commercial use of the name.

Having signed a contract, it appears that a deal may have been struck involving either (a) a licence for Mourinho and Man Utd to use the marks from Chelsea FC or (b) an assignment of ownership.  Either way, we suspect it hasn’t come cheap.

Manuela Macchi  27 May 2016


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