Jose Mourinho is one of the most well-known and highest profile football managers of the Premier League era. His CV now includes Chelsea, Inter Milan, Real Madrid, Chelsea (again), Manchester United, Tottenham, and Roma.
Mourinho is one of the first managers to compete in profile with his players. His celebrations and viral post-match interviews have made him recognisable and marketable. This was reflected in many of the contractual negotiations between clubs, with his 2016 move to Manchester United reportedly held up on the basis of his naming and image rights.
Chelsea Football Club Limited employed Mourinho as manager between 2004-2007 and 2013- 2015, and are still the registered proprietors of European Union Trade Mark (EUTM) and UK registered trade mark rights to the word JOSE MOURINHO, covering a range of goods. The earliest filings stem from the same EUTM, filed in March 2005, during Mourinho’s first tenure.
There is an important distinction to be made between a name and a trade mark. Chelsea’s EUTM for the words “JOSE MOURINHO” were filed in 2005 and again in 2013, tying in with each of his well-publicised appointments as manager of the club. The now registrations cover a range of goods between them, including cosmetics, jewellery, clothing, blankets and even as far reaching as walking sticks, whisky tumblers and televisions. The 2005 registration became available to renew during Mourinho’s second stint as a manager, and is currently in force until 2025.
This leads to a complex overlap between the rights afforded by trade mark registrations, and the rights to use an individual’s own name.
Any image rights for those involved in high profile and somewhat transient businesses like football will include private contractual arrangements between the parties. These contracts almost never last the 10-year registration or renewal terms of registered trade mark rights, and the contractual arrangements are complicated by manner in which the parties enter into, and terminate, these contracts. However, from a prima facie perceptive, Chelsea Football Club Limited currently still own the monopoly right to use of the brand “Jose Mourinho”. This is to say that use of the trade mark “Jose Mourinho” for those goods registered acts as an indication of origin – i.e. those goods, bearing that mark, are supplied by Chelsea. According to the register, the original EUTM rights have not changed hands in the 17 years since application. Chelsea could theoretically (subject to contractual provisions) attempt to enforce these rights against any commercialisation made by Mourinho’s current employer, Roma.
Ignoring the commercial factors (why would Chelsea commercialise the name of a manager no longer in their employment?), this poses a number of legal questions. There would be defences to any infringement claim available for Roma and Jose. Use of your own name is a valid defence, as is use of a trade mark where it is necessarily descriptive or indicative. Roma could even go on the offensive and attack the registrations on the basis of a lack of genuine use made (if Chelsea have not used the MOURINHO brand for 5 years or more), or arguably that the mark has now become deceptive as to origin. If Mourinho’s contract with Chelsea allowed him to retain the goodwill in the mark (English law unusually allows the separation of goodwill from a trade mark), he may even have a case for passing off under common law.
Most English cases involving the overlap of image rights and trade marks are based around the sale of a famous individual’s business, or unauthorised use and affiliation with an individual by third parties. The complex contractual positions around football manager appointments muddies the waters significantly.
What may be more interesting to keen Premier League followers will be whether the 2013 EUTM rights will be renewed by Chelsea in 2023, when they are otherwise due to expire. When Mourinho left Chelsea by mutual consent in 2016, the club statement read "The club wishes to make clear Jose leaves us on good terms and will always remain a much-loved, respected and significant figure at Chelsea." If Chelsea decided to renew their registered rights to the trade mark JOSE MOURINHO in 2023, does this leave a door open for a much loved Chelsea figure to make a return?
For more information on trade mark registrations and naming rights, contact Ben Scarfield or your usual Kilburn & Strode trade marks advisor.