The ‘Special One’ Might Not Be So Special To Manchester Utd…..

Jose Mourinho gave his trade mark rights to Chelsea FC!

So how did that happen?

It isn’t uncommon for celebrities, business people or sportsmen and women to trade mark their name. It gives them the opportunity to endorse products and services and earn revenues purely from being famous. Please note that registration of a trade mark name isn’t an image right – that’s the right to use your famous face with something. However, from a practical point of view the two are usually inextricably linked. It is actually quite difficult to trade mark some common names such as Smith – or Ward for that matter. There are too many of us to obtain powerful monopoly rights on our ordinary surnames. So for some famous faces, registration isn’t straight forward.

However, in some instances business people allow their business to own their trade marked name and then sell their name on. Elizabeth Emanuel, the well known designer of Princess Diana’s wedding dress, fell foul of this mistake in the 1990’s allowing her business to be bought with her name attached to it. Elizabeth freely admitted this was a major problem to her and in 2014 admitted in an article to the Daily Telegraph that she was “going to do it properly this time”. Ah – how many of us have said that?

Mourinho’s trade mark, which covers his scrawly signature as well as his name, is extensively registered in the UK and the EU by Chelsea FC and includes cover for aftershaves, smart cards, jewellery, leather goods and clothing. Presumably this was done to ensure that his employers had control over his rights to promote things such as men’s body care preparations, watches, leather goods and clothing whilst he was the Chelsea Manager.

Indeed the Mourinho registrations are extensive and further registrations filed in 2013 extend the cover to domestic kitchen items and video games. The video games trade mark will have an interesting affect on EA Sports who make the FIFA football games. EA Sports license names, including managers names from football clubs for a fee.

Now of course Jose Mourinho has what is called an own name defence which means he can still use his own name BUT what he can’t very easily do is use his name with Manchester United and their merchandise. That’s where the heated debate will come in terms of the value of these marks and any transfer to Manchester United.

The point is this……

So many people DON’T get proper advice on one of their key assets. Business people and sports people in particular often don’t think about this until it is too late! Footballer’s contracts are frequently unclear or ignore name rights meaning that it is difficult for people to be in control of their own name and what is associated with it. If you hand your rights over early in your career, it can be difficult and expensive to recover them for future use outside playing football, golf or doing business. Prevention is always less expensive than cure!

If you want to discuss this or any similar situation, please get in touch with us on 0113 237 9900 (Leeds Office) or 02074128372 (London Office).

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