The self-described ‘special one’ has been in the news recently following the sacking of Louis Van Gaal as Manchester United manager. At the time of writing, Jose Mourinho is expected to be appointed as the next manager to take control of this prestigious and well supported football club, a prospect that excited many ‘United’ fans, despite some former players such as Eric Cantona expressing their concern.
One rather interesting and (to many media reporters) bizarre issue to arise from Jose’s negotiations with the club regarding the vacant managerial position, has been to do with reports that Chelsea currently own the trade mark ‘Jose Mourinho’. On the face of it, this does seem odd, especially given the fact that Jose was sacked by Chelsea towards the end of 2015 following a dismal start to the Premier League season. Further still, many football fans and interested readers may be prompted to ask themselves how anyone, other than Jose himself, can legitimately claim ownership of the famous name ‘Jose Mourinho’.
The answer to this question lies at the heart of trade mark law, where it’s well established that a trade mark may be any sign that is capable of distinguishing the goods or services of one undertaking, from those of other undertakings. A sign in this context can be a name, provided it’s capable of performing its role as a trade mark in the eyes of every day consumers — that is, the sign needs to be distinctive of the trading origin of the goods or services that are sold under it.
As the name suggests, trade marks are purely concerned with ‘trade’. Therefore, anyone may apply for a trade mark so long as the proposed mark meets these basic requirements and doesn’t conflict with earlier rights. When Jose first arrived at Chelsea as the ‘special one’ in 2004, he either didn’t have an earlier ‘trade’ related right to his name or, if he did, he no doubt consented to his new club applying for and using his name as a trade mark on various goods (e.g. footballs, playing cards, novelty hats). Under UK law, Jose doesn’t have an inherent monopoly in his own name and the same holds true of other individuals named ‘Jose Mourinho’. Moreover, given that Chelsea have since registered this mark and sold various products under it since this time, the law appropriately recognises Chelsea FC as the owner of this name trade mark and this will remain the case until Chelsea either assigns it to another business (such as Manchester United) or it is cancelled by a tribunal.
A search of various trade mark registers reveals that Chelsea owns a number of registrations in the UK, Europe and abroad for the mark ‘Jose Mourinho’. Given Jose’s enormous reputation, which extends throughout the footballing world and beyond — coupled with the goodwill generated through the sale of merchandise featuring his name over the last decade — it’s unsurprising to read reports suggesting a large sum of money will be required if Manchester United hope to acquire these rights from Chelsea. Jose himself may feel a little uncomfortable with the fact that his own name is the legitimate property of a club that sacked him twice during his career, but he has no right to complain under trade mark law and must instead accept that control of his commercial name lies, and is likely to remain, in the hands of third parties.