Chelsea and José Mourinho

Famous athletes often file their name as a trademark. They often hold these registrations in their own IP company. This way, the athlete can cash in on his/her popularity and tackle use of their name by third parties. This is not limited to sportsmen (such as Max Verstappen or Ronaldo). José Mourinho is probably the most famous football (soccer) coach worldwide. After Chelsea won almost everything under his rule in 2005, the club files the name and signature of the trainer as a trademark, but on the name of the club as a holder.

In 2013 the trainer returns to the club, but when he later switches to competitor Manchester in 2016, the question arises: who owns the trademark rights to the name? What is mentioned in the contract about this? During the transfer it was rumored that these trademark rights formed an obstacle. When Mourinho later switches to archrival Tottenham Hotspur in November 2019, the question arises whether his name can be used freely for all intended merchandising?

The rights are still held by Chelsea, but the club does not renew the registration in time. This may be the result of a settlement between the parties. A lesson for the future. Register the trademarks on your own IP entity and license it out to yourself.

trademark-registration

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?