The Mourinho trade mark: what’s in a name when image counts for more
Chelsea may have made money by registering José Mourinho’s name and signature, but it missed a trick by not registering his image, writes leading IP barrister Mark Engelman
So the deal has been sealed. Manchester United have signed José Mourinho as the club’s manager after unceremoniously dumping Louis Van Gaal. The last obstacle to signing the deal was the fact that Chelsea FC had registered (and therefore owned) trade marks for the name and signature “José Mourinho”. Chelsea protected the trade marks both in the UK and across Europe through the UK and European Intellectual Property Offices.
Whatever deal Mourinho struck with Manchester United, the issue of the trade marks will have had to be resolved. Either Manchester United will have agreed to license those trade marks (and pay royalties each time they are used) or, more likely, they have acquired the trade marks in their entirety.
Well done, Chelsea, you might think, for being astute in registering those trade marks and earning money from them. Whilst there is every chance Mourinho consented to the trade marks Chelsea registered, Chelsea might have missed a trick because in December 2014 Guernsey opened an image rights register which would have enabled the club to control the use of his face rather than just his name and signature.
Famously, Diana and Elvis Presley had their names registered as trade marks. That brings with it its own problem because the courts will not readily protect the names and personalities of the dead. Since Mourinho is far from dead, his image rights remain very valuable. The race is therefore on to register his Guernsey image rights, something which has seemingly gone unnoticed, despite the numerous footballers and managers who have already registered in Guernsey.
What sells papers, rather than potpourri, is his image and not his name. Wake up Chelsea!
Barrister, Hardwicke and myBarrister
Director, Harbour IP - a Guernsey Image Rights company