Former Chelsea FC manager, Jose Mourinho, has just been hired by Manchester United. However, various media outlets are suggesting that negotiations were complicated by issues relating to ‘the ownership of Mourinho’s image rights’.
English law does not protect personality or image rights per se. Famous personalities may be able to prevent unauthorised use of their image by relying on the tort of passing off or the Data Protection Act 1998, but it is not possible to ‘own’ image rights under English law.
However, Chelsea FC owns registered EU trade marks for ‘MOURINHO’, ‘JOSE MOURINHO’, and Jose Mourinho’s signature (‘the Mourinho Marks’). This means that Chelsea can exploit Jose Mourinho’s name and signature on merchandise such as aftershave, DVDs, video games, jewellery, etc, and can prevent third parties from doing the same. This causes a problem for Manchester United who will wish to do the same.
What can Jose Mourinho do?
Jose Mourinho is still able to exploit his own name for personal endorsement or merchandising deals given that he can rely on the own name defence to trade mark infringement.
In any event, Mourinho owns earlier unregistered rights in his own name. Therefore, he may be able to apply to revoke the Mourinho Marks on the grounds that he is the owner of earlier unregistered rights.
In fact, Mourinho may be able to prevent Chelsea from using his name and signature in connection with merchandise given that such use is likely to constitute false endorsement. Of course this will depend on whether Mourinho has given his consent and continues to authorise Chelsea to use his name to endorse the merchandise, but this is unlikely to be the case after the termination of his employment at Chelsea. Mourinho may also be able to rely on the Data Protection Act to prevent unlawful processing (i.e. through unauthorised merchandise) of his personal data (i.e. name and signature).
What can Manchester United do?
Manchester United’s options are more limited so they may have to rely on Mourinho to exercise his own rights to revoke the Mourinho Marks. Alternatively, if Chelsea is not currently exploiting any of the Mourinho Marks, Manchester United may wish to try to revoke them on the grounds of non-use. Given the likely costs and length of time for any revocation proceedings, Manchester United is more likely to simply pay to acquire the Mourinho Marks from Chelsea.
Final remarks
Some of the Mourinho Marks were registered in 2005 and 2006 during Jose Mourinho’s first stint in charge of Chelsea. This means that they were in force during the 2007-2013 period when Mourinho managed Internazionale Milano and Real Madrid. Despite exploitation of Mourinho’s name by these two clubs, Chelsea did not seem to be actively enforcing their rights during this period. However, Chelsea may take a different stance to enforcing their trade mark rights if an English rival is the infringer.
It is interesting to note that Chelsea also own a registered EU trade mark for ‘ANCELOTTI’ – their former manager, Carlo Ancelotti is due to take charge of Bayern Munich this summer.
Law and Football 