During the recent announcement of Jose Mourinho being signed as the manager of Manchester United, it was revealed that his name is a trade mark owned by Chelsea. This was reported to be a stumbling block which delayed the signing. This raises the question on whether a company can own a person’s name as a trade mark.
The history of Jose Mourinho’s trade mark
Chelsea Football Club filed ‘Jose Mourinho’ as a trade mark in 2005 under various classes. This was a first where a managers name was registered as a trade mark. The popularity and marketability of Jose Mourinho was the reason why they decided to obtain the trade mark. The football manager has been successful in carving out a brand for himself.
Can a company own the trade mark instead of the person?
The owner of the trade mark is the entity that has filed for it to be registered. In this specific case, Chelsea Football Club filed for the trade mark and they would have obtained permission from Jose Mourinho himself. The name is a commercial entity which can be used for trade purposes and that is why it was protected. If a company has the relevant permission, it can file a trade mark and count it as one of their IP assets. From Jose’s perspective, the better way would have been to file a trade mark himself and license it to Chelsea.
Licensing a trade mark instead
A person or company would be better off by obtaining a trade mark and then licensing it out to another party. This is something that would be negotiated by Jose Mourinho’s legal team, but they will have to cover the costs of the transfer as well as potential loss of earnings. Without the permission of the trade mark owner, Manchested United would not be able to use the name on their merchandise or any commercial activity in general.
This is a unique situation, and the parties involved would be able to find solution primarily because of the clout of these Football clubs. They can afford to spend money on legal fees and/or licensing fees to use the trade mark. For smaller companies or ones not so financially able, the whole process would be costly and challenging.
