Trademark Jose Mourinho
Jose Mourinho Trademark - Is it Holding Up Man United?
In a word, no.
In another word, unlikely.
And in one final word, maybe.
God damn lawyers, why can't we ever just give a straight answer. Look, if I register your name tomorrow, and then tell you you can't use it, do you think that would be possible and legal?? No, of course not. But what if I tell you that you can can register my name and I licence you to use it, say to release an Eau De Toilet called Brian Conroy. And then I release my own Eau De Toilet also called Brian Conroy. That doesn't seem fair either. Hmmmmm.
There's been a huge big 'broo ha ha' today in the independent about the fact that Chelsea 'own' the name Jose Mourinho and lots of speculation that this is what's holding up the deal with Manchester United going through. It's True, Chelsea do have many trademarks registered involving Jose Mourinho's name. In the UK, in Europe and also in the US. They even have Jose Mourinho's signature trademarked.
And it is possible for a name to be registered as a Trademark:
Article 4 of the relevant EU Trademark Regulation (there's equivalents in all national laws) provides (and is soon to be amended) that "An EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings"
And then things get a bit complicated! So, because Chelsea own the Trademark to Jose Mourinho's signature, does that mean he's been breaking the law every time he's signed an autograph and owes them lots of money? No. Below is the list of goods and services that Chelsea have registered the Special One's name for. Firstly, if they haven't used his name for those products for a certain period of time, then they can be revoked. And I for one have never seen any of the following, though I would love to:
- Jose Mourinho lingerie
- Jose Mourinho non-medicated mouth wash
- Jose Mourinho mechanisms for coin-operated apparatus
- Jose Mourinho life-saving and teaching apparatus and instrument
That's the first thing. THEN there's the issue of the 'Own Name Defence' in Trademark Law (UK, Ireland and the EU generally). The relevant article provides that:
Limitation of the effects of an EU trade mark
1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(a) the name or address of the third party, where that third party is a natural person;
(b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
(c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.
2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.
And then there's this:
Article 53(2) - "An EU trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:
(b) a right of personal portrayal;
(d) an industrial property right."
So, it's a bit complicated. There's other terms about where an agent or representative registers a trademark for a third party also, and registering bad faith is another ground for objection. Much MAY depend on what the basis of the agreement between Jose Mourinho and Chelsea were and whether they were authorised or licensed to use his name and in what circumstances and on what terms. If it was an exclusive licence to use, he could be in trouble, granted. But I'd be very surprised if that was the case, and I'd also be inclined to think that either on the basis of the own name defence or article 53(2) he would have solid grounds to have their trademarks revoked or assigned to him. I don't believe this is what's holding up his appointment at Man United, but then what do I know, I'm not 'The Special One'.....And don't get me started on that!
List of goods
- Class 3
- After-shave lotions; eau de cologne; non-medicated toilet preparations; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery; hair care preparations; skin care preparations; sun-tanning preparations; room fresheners (fragrance preparations); dentifrices; toothpaste; boot cream; boot polish; creams for leather; depilatory preparations; soaps; toiletries; antiperspirants; essential oils, flower perfumes in the form of oil and scented waters; bath salts and preparations; cosmetics kits; cosmetics; cotton wool for cosmetic purposes; non-medicated creams; deodorants and deodorant soaps for body and feet; cosmetic dyes; eyebrow cosmetics and preparations; fabric softeners; flower perfumes; hair dyes and hair sprays; incense; ionone (perfumery); jewellers' rouge; lipsticks; make-up preparations; non-medicated mouth washes; nail polish and nail preparations; cosmetic pencils; potpourris; shampoos; shaving preparations; talcum powders; transfers (decorative) for cosmetic purposes; windscreen cleaning liquids.
- Class 9
- Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnets; fridge magnets; mechanisms for coin-operated apparatus; data processing equipment; computers; fire-extinguishing apparatus; radios; televisions; plasma screens; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; video recorders; tape recorders; cassette players; record players; juke boxes; PDAs (personal digital assistants); MP3 players and MP3 readers; audio and/or video file recorders and/or players; magnetic data carriers; recording discs; magnetic tapes for recording and reproducing sound or vision; audio recordings; video recordings; audio and video recordings; motion picture films; animated cartoons; photographic transparencies and photographic and cinematographic films prepared for exhibition purposes; CDs, DVDs, CD ROMs; cassettes; video cassettes; gramophone and phonographic records; downloadable audio and video recordings; downloadable ring tones, music, MP3s, graphics, games and video images for wireless mobile communication devices; screen savers; downloadable electronic publications; remote control apparatus; cameras, video cameras; cases for photographic apparatus and instruments; photographic apparatus and equipment; camera film; digital photo frames; anti-dazzle shades, glasses and visors; binoculars; prescription and non-prescription eye glasses, spectacles and sunglasses and cases, chains, cords and frames therefor; containers for contact lenses; optical goods; holograms; compasses and barometers; bells; calculating machines; computers; portable computers; computer hardware and parts and fittings therefor; computer screens; computer monitors; computer peripherals; mouse mats; wrist pads; computer mice; keyboard and screen covers; customised computer disks and CD-ROMs; computer software; computer programs; gaming software; magnetic data carriers, recording discs; pre-recorded games on CD, software and any other recording media; downloadable computer software; electronic storage media; memory cards; customised storage boxes for electronic storage media, CDs, DVDs and disks; cash registers, calculating machines; telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; telephone answering apparatus, telephone recorders and telephones incorporating facsimile machines; smart cards; telephone cards; encrypted smart cards; encoded smart cards; encrypted telephone cards; encoded telephone cards; encrypted cards; encoded cards; magnetic identity cards; time recording apparatus; magnifying glasses; measures and measuring instruments; mechanical signs; neon signs; sockets; plugs and switches; ticket dispensers; vehicle breakdown warning apparatus; apparatus for recording, transmission or reproduction of sound or images; barometers; parts and fittings for all of the aforesaid goods.
- Class 14
- Jewellery; earrings; necklaces; bracelets; brooches; watches; watch straps; stopwatches; clocks; timepieces; chronometers; key rings of precious metal; trinkets and fobs; cufflinks; tie clips; tie pins; jewellery cases of precious metal; jewel chains of precious metal; collectible coins; ornaments of precious metal and ornamental pins; silver ornaments; hat and shoe ornaments; jewellery charms, key rings, all the aforesaid goods being made wholly or principally of precious metal and their alloys or coated therewith; parts and fittings for all the aforesaid goods.
- Class 18
- Articles made of leather and/or of imitation leather; suitcases, luggage bags; back packs, rucksacks; haversacks; knapsacks; bags for merchandise packaging, shopping bags; duffel bags; travel bags for boots and shoes; purses; wallets, wallets incorporating cheque book covers; handbags; shoulder bags; credit card holders; key cases, credit card cases, attaché cases, briefcases; bags and holdalls for sports clothing; satchels; school bags; trunks and travelling bags; carry-all bags; umbrellas; walking sticks; valises; sunshades; parts and fittings for all the aforesaid goods.
- Class 21
- Domestic utensils and containers; chinaware; glassware; porcelain and earthenware; combs; sponges (not for surgical use); glasses; half pint glasses; pint glasses; tall glasses; mugs; cups; whisky glasses; wine glasses; champagne flutes; tumblers; whisky tumblers; brushes; moneyboxes; toothbrushes; figurines in this class; vases of precious metal; tankards of precious metal; candle sticks and non-electric candelabras of precious metal; napkin holders and napkin rings being made wholly or principally of precious metal and their alloys or coated therewith.
- Class 25
- Articles of outer clothing; T-shirts; shirts; sweaters; cardigans; jackets; coats; shawls; trousers; pants; shorts; dungarees; leggings; skirts; dresses; waterproof clothing; galoshes; overalls; collars; collar protectors; ties; cravats; scarves; gloves; mittens; belts; braces; pyjamas; nightshirts; nightgowns; dressing gowns; bathrobes; bathing suits, bathing trunks; bathing caps; aprons; baby boots; diapers and bibs; romper suits; baby pants and sleep suits; articles of sports clothing; leisurewear; track suits; headbands; wrist bands; articles of underclothing; underwear; singlets; vests; underpants; briefs; boxer shorts; lingerie; hosiery; footwear being articles of clothing; socks; garters; articles of footwear; boots; shoes; sandals; slippers; football boots; football shoes; training shoes; articles of headgear; caps; hats; berets; hoods; ear muffs; visors.
- Class 28
- Games; games for video game machines; home video game machines and amusement apparatus all for use with television receivers; games; toys, party novelty hats, shin guards, gloves (games), balloons, sporting articles (other than clothing), and play balls; footballs; teddy bears; ordinary playing cards; playthings; face masks being playthings.