In the midst of contract negotiations to bring Jose Mourinho to Old Trafford, it was reported1 (and remains for all to see on the register of trade marks held by the UKIPO2) that Chelsea Football Club, Mourinho’s former employer, owned a number of registered trade marks for ‘Mourinho’, ‘Jose Mourinho’ and his signature. The trade marks covered a variety of goods and services ranging from dressing gowns to after-shave lotions. According to the same reports, this unusual situation delayed the appointment of Mourinho as Manchester United Manager and sends out some important messages about intellectual property and brand control within the sports industry.
TRADE MARKS IN THE SPORTS INDUSTRY
A registered trade mark is a valuable asset, giving the proprietor an exclusive right to exploit the mark in relation to the goods and services for which it is registered (Section 9(1) Trade Marks Act 1994 (“TMA”)). For this reason, a number of high-profile athletes have personally registered their names as trade marks to take advantage of the licensing opportunities and ability to prevent unauthorised use. Notable examples include Lionel Messi (EU006353131), Nico Rosberg (EU004920807) and Serbian tennis superstar Novak Djokovic (EU014003727).
Beyond the traditional name trade marks, some sporting icons have been a little more creative with their registrations.A trade mark for Fred Perry’s signature has been registered since as early as 1965 (UK00000875071), and other sports stars such as Michael Schumacher (EU001022797) have since followed suit. John McEnroe’s famous catch phrase “you cannot be serious” was also registered with the US Trade Mark Office until September 2014 (US Registration No. 3379565) and many will remember Gareth Bale’s audacious attempt to trade mark his ‘eleven of hearts’ goal celebration, which attracted significant media attention.3 This was registered in July 2013 (UK00002657917), but the Welsh forward subsequently gave up his rights to this trade mark in November 2013 for reasons unbeknown.4
THIRD PARTY OWNERSHIP
Issues regarding third party ownership/investment (TPO/TPI) of footballers’ rights are by no means novel. In 2006, Carlos Tevez and Javier Mascherano signed for West Ham United and it subsequently transpired that the transfer and registration-related “economic rights” of the Argentinian duo were owned by a third party through offshore companies run by Iranian businessman, Kia Joorabchian.5
Whilst TPO/TPI of economic rights has since been banned by FIFA6 and the Premier League7 (as subsequently strengthened by the Third Party Interest in Players Regulations 2015-16 implemented by The FA), Mourinho’s example demonstrates that third parties can still own and exploit trade marks and other image rights for players and managers, albeit in this case Chelsea FC moving from employer to ‘third party’ status once Mourinho ceased to be Chelsea’s manager. This type of third party ownership remains outside the scope of the current prohibitions on influence and economic rights.
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By Charles Maurice, commercial lawyer & Tom Collins, IP lawyer
First published in LawInSport, July 2016
Charles Maurice
Tom Collins