Associate Director Luke Rehbein on the LinkedIn story shared by the World Trademark Review on the battle for José Mourinho’s name.
It’s all change at Tottenham Hotspur football club. In November 2019, the club fired long-term manager Mauricio Pochettino and quickly appointed Premier League stalwart Jose Mourinho in his place.
A return to the frontline of the Premiership, Mourinho’s manager position is his fourth. Previously, he managed Chelsea FC at two separate times, and Manchester United. The latter ended in December 2018, since when Mourinho took time off.
Proving he is back with a bang, Spurs won its first game under Mourinho against West Ham. But while all is going smoothly in the field, a question mark hovers over 11 trade marks registered around the world for Mourinho’s own name. This is because they are still owned by his former club, Chelsea FC.
There could be trouble ahead
IP experts spoke to the World Trademark Review (WTR) saying that there could be looming issues between Spurs and Chelsea over the trade marks. The situation highlights the danger of signing away personal rights to any corporate entity. And it’s perhaps even more of a problem in the volatile and unstable world of football management.
Mourinho is considered by many as one of the finest managers of recent times. His fame and reputation stand up all around the world, all of which has made him extremely marketable. And this is the reason for the numerous trade marks of his personal name around the world. He is the only manager in the Premier League to have trade marks registered in his name. But he doesn’t own them.
Instead, Chelsea owns the JOSE MOURINHO name in all kinds of jurisdictions around the world. These include the UK, the US, the EU and Malaysia. Chelsea also owns the trade marks in China, Australia and Norway through WIPO. Classes covered by the trade marks include all kinds of merchandising, clothes and video games.
Problems in the past for Manchester United
The Chelsea-owned trade marks have already caused problems for Mourinho. When he was negotiating his contract with Manchester United, the marks proved a major sticking point in discussions. At the time, multiple media reports suggested that Chelsea might push for a multi-million pound settlement fee.
And while this didn’t happen, three years later there is still confusion around the trade marks. Questions have arisen again following his move to manage Spurs, with some wondering whether they will have to pay Chelsea to commercialise Mourinho’s name.
One commenter, Chris McLeod who is a partner at Elkington and Fife, told WTR that Chelsea FC could slowly be relinquishing the trade marks by allowing them to lapse and not renewing them. He posits that this could be part of a secret deal negotiated in 2016, which will eventually free up all of the trade marks. And while this is a possibility, today there are still 11 active trade marks for Mourinho’s name owned by Chelsea FC. So what does this mean for Tottenham Hotspur?
No comment from Chelsea or Tottenham on the trade mark issue
McLeod told WTR that if Chelsea begins to talk about trade mark infringement, Tottenham could have a case to cancel the marks based on non-use. He also said that cancelling the trade mark registrations based on invalidity would be particularly tricky in the UK due to the Trademarks Act 1994.
A subsection of the act says: “in consequence of the use made of it by the proprietor or with his consent in relation to the goods and services for which it is registered, it’s liable to mislead the public, particularly as to the nature, quality or geographical location of those goods or services.” This means cancelling on this basis is not an option at least in the UK. So what’s the most likely outcome?
Neither club has so far commented on the issue, but it’s apparent that there is still much confusion around Mourinho’s name and trade marks. A potential solution could be for Mourinho to make new trade mark applications in his own name, with a special licence for Spurs use as long as he remains manager. This would need Chelsea to refrain from taking any action, something that IP experts believe to be the most likely scenario.