It has been widely reported (see the BBC article by clicking here) that image rights negotiations are the cause of delaying Jose Mourinho's appointment as the new Manchester United manager. Now, whilst image rights are not expressly recognised under UK law, the term can be used collectively for agreements covering trade marks, passing off claims an privacy rights.
Mourinho is expected to be named as Louis van Gaal's replacement, however, in an unusual twist to negotiations it is understood that Chelsea own Mourinho's name and signature as trademarks and could demand payment for a transfer of the mark before the deal is concluded.
The deal to bring Mourinho to Old Trafford is largely complete, but discussions between his agent and the club will enter a third day.
Jose Mourinho Trademarks
In 2005 Chelsea Football Club Limited registered the word mark 'Jose Mourinho' under EUTM Number 004365755 in and his signature as a figurative mark under EUTM Number 004853545 both in NICE classifications 3, 9, 14, 18 and 25. In 2013 they registered a further word mark for 'Jose Mourinho' in classes 21 and 28 (EUTM Number 011938651).
Registration of the marks means Chelsea, and not Mourinho, has the exclusive right to use his name and signature in the NICE classes specified. The most obvious items to which the marks may be applied would be club merchandise and sporting goods.
It is very unusual for an individual who is so high profile and who clearly would have rights in his image or name not to own the trademark to their own name, and how and why Mourinho consented to this is not known.
As the marks have been granted, Chelsea has an exclusive right to use them in the classes of goods and services which they are registered in. Neither Mourinho nor United can avoid the restrictions imposed by the registration of the trademark. As a result their options are:
United do not use Mourinho's name against the exhaustive list of items that Chelsea have registered - from umbrellas to watch straps, lingerie and talcum powders. United pay Chelsea for a licence so they can use Mourinho's name on club merchandise. United or Mourinho 'buy' the trademarks back. United challenge the trademark if they think they can prove it has not been used by Chelsea.
It is interesting to note that since registration of the initial trademarks in 2005 Mourinho has managed both Inter Milan and Real Madrid, suggesting that a way around the issue was found.
Show me the Money
If United or Mourinho ask Chelsea for a licence, Chelsea could rightfully request payment of hundreds of thousands of pounds and/or a royalty payment for a percentage of the sales on goods bearing the trademarks. However, given the scope for merchandise sales it could still be worth the investment for United and Chelsea would be effectively gaining an income stream without having to actually do anything.
As with many other high profile sports people and celebrities Mourinho will have his own sponsorship deals. United also have theirs such as Chevrolet. Here there is also a potential conflict between Mourinho's personal sponsorship deals and United's sponsors.
However, most other managers and players have similar corporate deals and therefore it is not thought that this will hold up negotiations.
Posted by: in: Contract, News, Trade Marks