You can download the latest edition of our Property Disputes Quarterly Update, Winter 2017 via the link at the bottom of this preview of what is featured.
IP in the Floodlights
- AuthorAndrew Turner
Intellectual Property is a necessary evil in business and something every new, aspiring or existing business owner should be aware of.
A classic example of trademark infringement would of course be opening up a burger restaurant and unveiling a logo resembling the Golden Arches (®). The mark doesn’t even have to be identical to be in breach of trademark law – a sign can be the same or similar but if used to identify competing or related services, there is a risk of being in breach.
The most topical illustration of the impact of trademark law is demonstrated by the dilemma of one controversial man’s appointment as Manchester United’s manager.
In a bizarre twist of events, it has emerged that Chelsea FC still own the trademark for the name ‘Jose Mourinho’. Mourinho’s name is trademarked under five classes of goods for use on products as diverse as aftershave, calculators, shawls and cigarette holders. Chelsea have even managed to register a trademark of his signature.
The effect of this is that if Manchester United were to create a line of ‘Mourinho’ clothing, it would be in breach of Chelsea’s trademark, which isn’t due to expire until 2025.
Whilst there is precedent in football for a player to sell or make an agreement over their image rights, as was the case with Rooney’s name, it is unusual for an individual not to own the rights to their own name. Player contracts are often vastly different to those of managers, coaches or staff – most notably differing in stability, but very rarely in terms of image rights.
Mourinho cannot override the trademark, so the options are:
- United can never use Mourinho’s name against any of the exhaustive list of items that Chelsea have registered – from teddy bears to whisky glasses to lingerie;
- United challenge the trademark, if they can prove it has not been used by Chelsea;
- United request that Mourinho buys the trademark back; or
- United pay Chelsea for a license to use the Mourinho name on club merchandise.
The latter option, whilst most expensive, would be the most likely compromise and considering the revenue from marketing, probably worth the investment. After all, they do call him ‘The Special One’...
There were a number of other conflicts of interest to complicate the deal further, including a clash between Mourinho’s personal allegiance to Jaguar and United’s own sponsorship deal with Chevrolet.
All this illustrates that whether you are setting up a new business, or awaiting your appointment as the next manager of a Premiership Football Club, it is important to remember to consider any IP issues.