Luke Rehbein keeps up to date on trade mark news through LinkedIn. Read on for news of potential trouble for Tottenham Hotspur football club if it wants to commercialise its new manager’s name

1. Associate Director Luke Rehbein on the story shared by the World Trademark
Review on the battle for José Mourinho’s name.
It’s all change at Tottenham Hotspur football club. In November 2019, the club fired
long-term manager Mauricio Pochettino and quickly appointed Premier League
stalwart Jose Mourinho in his place.
A return to the frontline of the Premier League, Mourinho’s manager position is his
fourth in the English top division. Previously, he managed Chelsea FC at two
separate times, and Manchester United. The latter ended in December 2018, since
when Mourinho took time off.
Proving he is back with a bang, Spurs won its first game under Mourinho against
West Ham. But while all is going smoothly on the field, a question mark hovers over
11 trade marks registered around the world for Mourinho’s own name. This is
because they are still owned by his former club, Chelsea FC.
There could be trouble ahead
IP experts spoke to the World Trademark Review (WTR) saying that there could be
looming issues between Spurs and Chelsea over the trade marks. The situation
highlights the danger of signing away personal rights to any corporate entity. And it’s
perhaps even more of a problem in the volatile and unstable world of football
management.
Mourinho is considered by many as one of the finest managers of recent times. His
fame and reputation stand up all around the world, all of which has made him
extremely marketable. And this is the reason for the numerous trade marks of his

2. personal name around the world. He is the only manager in the Premier League to
have trade marks registered in his name. But he doesn’t own them.
Instead, Chelsea owns the JOSE MOURINHO name in all kinds of jurisdictions
around the world. These include the UK, the US, the EU and Malaysia. Chelsea also
owns the trade marks in China, Australia and Norway through WIPO. Classes
covered by the trade marks include all kinds of merchandising, clothes and
videogames.
Problems in the past for Manchester United
The Chelsea-owned trade marks have already caused problems for Mourinho. When
he was negotiating his contract with Manchester United, the trade marks proved a
major sticking point in discussions. At the time, multiple media reports suggested
that Chelsea might push for a multi-million pound settlement fee.
And while this didn’t happen, three years later there is still confusion around the
trade marks. Questions have arisen again following his move to manage Spurs, with
some wondering whether they will have to pay Chelsea to commercialise Mourinho’s
name.
Chris McLeod who is a Partner at Elkington and Fife, told WTR that Chelsea FC
could slowly be relinquishing the trade marks by allowing them to lapse and not
renewing them. Chris posits that this could be part of a secret deal negotiated in
2016, which will eventually free up all of the trade marks. And while this is a
possibility, today there are still 11 active trade marks for Mourinho’s name owned by
Chelsea FC. So what does this mean for Tottenham Hotspur?

3. No comment from Chelsea or Tottenham on the trade mark issue
Chris McLeod told WTR that if Chelsea begin to talk about trade mark infringement,
Tottenham could have a case to cancel the trade marks based on non-use. Chris
also mentioned that cancelling the trade mark registrations based on invalidity would
be particularly tricky in the UK due to the Trademarks Act 1994.
Neither club has so far commented on the issue, but it’s apparent that there is still
much confusion around Mourinho’s name and trade marks. A potential solution could
be for Mourinho to make new trade mark applications in his own name, with a
special licence for Spurs use as long as he remains manager. This would need
Chelsea to refrain from taking any action, something that IP experts believe to be the
most likely scenario.