It's all in the name

As the new Premier League season kicked off at the weekend, many football fans from around the country tuned in to see Gary Lineker present ‘Match of the Day’ in his underpants. Trade mark experts were, on the other hand, reflecting on the troubles that were experienced when manager, Jose Mourinho, made his move from Chelsea to Manchester United and what lessons can be learned from this.

At the time the deal was going through for the famous manager to take the reins at Manchester United, a holdup was reported. It soon became apparent that Chelsea Football Club owned a number of registered trade marks for the name Jose Mourinho in the UK and European Union, one of which is a figurative mark of his signature. This would have prevented Manchester United from using the name of its new manager for the goods and services covered by the trade mark registrations, without the necessary permissions being granted to it by Chelsea. Whilst this issue did not adversely affect Mourinho’s eventual appointment, it did hold matters up for a short period of time.

How the clubs have reached an agreement has not been disclosed, but possible solutions include:

  • assigning the trade marks from Chelsea Football Club to Manchester United or to Mourinho himself; or
  • granting rights to Manchester United or Mourinho to use the trade marks.

It is safe to assume that an agreement was eventually reached, as Mourinho could be seen dutifully stood on the side lines as Manchester United took on Bournemouth on Sunday.

We can see from the records held at the UK and EU Intellectual Property Offices that the trade marks are still in the name of Chelsea Football Club Limited. It could be that Chelsea has assigned the trade marks and that the UK and EU Intellectual Property Offices’ registers have not yet been updated. Alternatively, Chelsea could have granted a licence to Manchester United to use the trade marks. The finer details of the settlement reached by the parties may forever remain a mystery.

The Lesson  

An EU or UK trade mark registration gives the owner of the registration the right to stop unauthorised use of the same mark or confusingly similar marks in the EU or UK. A registered trade mark can be used to prevent the registration of the same trade mark (or a confusingly similar trade mark) by third parties in respect of the same or similar goods.

Before starting to use a new mark, or filing an application to register a trade mark, it is highly advisable to carry out a clearance search for registered marks that may prove problematic.

Forewarned is forearmed. If you can determine that someone else is already using a mark that you intend to use, then you can avoid getting into costly opposition and infringement proceedings. This might be by choosing a different mark entirely or, if the prior rights holder is willing, by negotiating a co-existence agreement, licence agreement or assignment of the trade mark you wish to use.

Wilson Gunn can assist with trade mark clearance searching and provide expert, professional and commercially tailored advice and assistance on whether your mark is free to use or not.

If you require advice on any of the trade mark matters highlighted in this article or any other aspect of your intellectual property, you can contact one of our advisors on 08444 77 00 22 or by clicking here.

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