Mourinho completes Manchester United deal but still haunted by Chelsea's trademark

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Manchester United’s most recent manager Louis van Gaal, was fired earlier this week and the portuguese native, 53-year-old Jose Mourinho has now agreed to replace him on a three year contract.

However, Mourinho's ex-club, Chelsea, still has a trademark for his name in categories including clothing, toiletries and jewellery and would therefore prevent his new club from launching a merchandise brand in his name. If United did try to launch a brand in their new manager’s name in these categories, they would be infringing on Chelsea’s earlier trademark and it could lead to a costly lawsuit.

The Mourinho’s name and signature were registered by Chelsea football club in 2005, an unusual thing in itself since it is normally the individual that owns their own trademarked name.

However, this is not the first time that a club has had to get around Chelsea’s primary claim to the “special one’s” name. Since Chelsea registered their mark, both Real Madrid and Inter Milan have been managed by the portuguese and found a way of using his name without infringing on the original trademark.

A few solutions to this issue have been suggested in this  article by the BBC including licensing and even trying to buy the trademark from Chelsea (which could mean a six figure settlement).  According to the World Trademark Review, Clare Jackman an IP lawyer at Norton Rose Fulbright believes that “Mourinho can formally withdraw his consent to Chelsea’s (if that wasn’t triggered when the contract with Chelsea was terminated) use of his name and even seek to invalidate the trademarks on that basis.” In any case, United has yet to take action to secure the trademark rights.

An important lesson that can be learnt from this case is that when trademarking your own name, it is better to register it yourself and then licence it to others in order to avoid any future complications. However, if you do allow a third party to trademark your name, you should ensure that you have a written contract that states that the trademark ownership will be transferred over to you once you are no longer affiliated with them.  As Chelsea has proven, a trademark can be a very valuable asset as it will protect your brand and allow you to enforce your trademark rights over other companies that may infringe upon your mark.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.

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