Luke Rehbein on the news story covering José Mourinho trade marks

flickr, joshjdss, (CC BY 2.0)

Luke Rehbein on the LinkedIn coverage on Chelsea v Tottenham Hotspurs over José Mourinho trade marks

It’s been a busy few weeks for Tottenham Hotspur football club. A sudden decision to fire manager Mauricio Pochettino was followed the next day by the appointment of Jose Mourinho.

This role is Mourinho’s comeback to the frontlines of Premier league football after he left Manchester United in December 2018. And it couldn’t have started better for him as manager. His first game came just days later and ended in a win for Spurs against West Ham.

But behind the scenes, could trouble be brewing over the 11 registered trade marks relating to Mourinho? Owned by his former club Chelsea, they are registered both in the United States and the European Union. Intellectual Property (IP) experts see potential trouble ahead unless he takes ownership of his name.

Potential trouble for Spurs and Chelsea over trade marks

The Spurs manager has managed Premier League clubs three times before. Two stints at Chelsea FC was followed by a spell at Manchester United, which ended 12 months ago.

Talking World Trademark Review (WTR), an IP expert explains that there is the possibility of trade mark issues between the football clubs. It’s a situation that highlights the problems connected with signing away personal IP rights to corporate entities. And this is particularly problematic within unstable sectors, such as Premier League club management.

Mourinho is widely regarded as one of the most successful football managers of the 21st century. And due to his immense marketability and popularity around the world, his name is worth millions.

Chelsea owns at least 11 Mourinho trade marks around the world

This is why he is the only Premier League football manager with trade marks registered for his name. These marks are registered around the world across a number of jurisdictions. But the tricky part comes with the fact that they’re owned by Chelsea FC.

Chelsea owns the trade marks for JOSE MOURINHO in the UK, the US, the EU and Malaysia. In addition, the club also owns the trade mark in Norway, China and Australia via the WIPO. Classes ownership covers everything from merchandise to clothing and even videogames.

When Mourinho was negotiating with Manchester United for the manager position in 2016, these trade marks became problematic. The marks and associated rights issues held up discussions and delayed the announcement of his role at Manchester United. At the time there were media reports that Chelsea were going to push for a settlement fee potentially worth millions of pounds. 

This sticking point had a number of wide-ranging implications in terms of Manchester United’s commercial activities for anything that comes under the trade mark for Mourinho.

Confusion over trade marks still apparent

Three years later, and the question of the ownership of Mourinho’s name is still not resolved. Questions have arisen following Mourinho’s move to Spurs, surrounding ownership, rights and whether Spurs will have to pay out to commercialise its new manager’s name.

Chris McLeod, Partner at Elkington and Fife told WTR that it’s possible Chelsea FC is giving up the trade mark rights by allowing them to lapse. He said that it’s apparent that some of the registered marks have been allowed to lapse and haven’t been renewed. Citing the possibility that this could have been part of a deal formed back in 2016, it’s a move that would make sense for Chelsea. This is because it’s cheaper to allow the trade marks to lapse rather than surrendering them.

However, while some of the marks have indeed lapsed, there are still 11 active trade marks concerning Mourinho owned by Chelsea. So, is there any potential for infringement or problems down the line?

Chris McLeod thinks so, but says that should Chelsea make noises about infringement, Spurs could argue that the trade marks should be cancelled based on non-use. This is usually a given around five years after trade mark registration. Chris goes on to say: “… applying to cancel the registrations on the basis of invalidity could be problematic, at least in the UK, due to the sub-section of the Trademarks Act 1994 that 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 essentially closes this option to the club.

Chelsea FC wouldn’t comment on the issue, and Spurs have yet to respond to WTR with a comment. While the clubs aren’t giving anything away, it’s clear that there are potential issues and a lot of confusion over Mourinho’s name. One possible solution could be for Mourinho himself to make new applications in his name, with a licence in favour of Spurs for as long as he works there. Should Chelsea FC not take action, this would clear up Mourinho trade marks for the future.

About Luke Rehbein

Luke Rehbein is an Associate Director at Dawn Ellmore Employment and a qualified CertRP recruitment professional. Luke can help place individuals at all levels in Patent, Trade Mark and Legal Attorney and Solicitor Staff roles in the UK and worldwide. Contact Luke Rehbein through LinkedIn here