Jose Mourinho Trademark – Is it Holding Up Man United? 

Trademark Jose Mourinho

Jose Mourinho Trademark – Is it Holding Up Man United?

In a word, no.

In another word, unlikely.

And in one final word, maybe.

God damn lawyers, why can’t we ever just give a straight answer. Look, if I register your name tomorrow, and then tell you you can’t use it, do you think that would be possible and legal?? No, of course not. But what if I tell you that you can register my name and I licence you to use it, say to release an Eau De Toilet called Brian Conroy. And then I release my own Eau De Toilet also called Brian Conroy. That doesn’t seem fair either. Hmmmmm.

There’s been a huge big ‘broo ha ha’ today in the independent about the fact that Chelsea ‘own’ the name Jose Mourinho and lots of speculation that this is what’s holding up the deal with Manchester United going through. It’s True, Chelsea do have many trademarks registered involving Jose Mourinho’s name. In the UK, in Europe and also  in the US. They even have Jose Mourinho’s signature trademarked, see:

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And it is possible for a name to be registered as a Trademark:

Article 4 of the relevant EU Trademark Regulation (there’s equivalents in all national laws) provides (and is soon to be amended) that “An EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”

And then things get a bit complicated!  But most the articles at the top of the Google Searches don’t seem to have consulted a lawyer, solicitor, barrister or anybody who knows anything about Trademarks, and that’s probably because they would wreck the story!

So, because Chelsea own the Trademark to Jose Mourinho’s signature, does that mean he’s been breaking the law every time he’s signed an autograph and owes them lots of money? No.

Below is the list of goods and services that Chelsea have registered the Special One’s name for. Firstly, if they haven’t used his name for those products for a certain period of time, then they can be revoked. And I for one have never seen any of the following, though I would love to:

• Jose Mourinho lingerie
• Jose Mourinho non-medicated mouth wash
• Jose Mourinho mechanisms for coin-operated apparatus
• Jose Mourinho life-saving and teaching apparatus and instrument

That’s the first thing.

THEN there’s the issue of the ‘Own Name Defence’ in Trademark Law (UK, Ireland and the EU generally). The relevant article provides that:

Article 12

Limitation of the effects of an EU trade mark

1.  An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

(a) the name or address of the third party, where that third party is a natural person;

(b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;

(c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

2.  Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.

And then there’s this:

Article 53(2) – “An EU trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:

(a) a right to a name;

(b) a right of personal portrayal;

(c) a copyright;

So, it’s a bit complicated. There’s other terms about where an agent or representative registers a trademark for a third party also, and registering bad faith is another ground for objection.  Much MAY depend on what the basis of the agreement between Jose Mourinho and Chelsea were and whether they were authorised or licensed to use his name and in what circumstances and on what terms. If it was an exclusive licence to use, he could be in trouble, granted. But I’d be very surprised if that was the case, and I’d also be inclined to think that either on the basis of the own name defence or article 53(2) he would have solid grounds to have their trademarks revoked or assigned to him. I don’t believe this is what’s holding up his appointment at Man United, but then what do I know, I’m not ‘The Special One’…..And don’t get me started on that!

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List of goods