Gloves are off | 

Conor McGregor fights Dutch clothing firm in trademark battle

This follows a Dutch-based firm, McGregor IP B.V., opposing the Dubliner's second application to register 'Conor McGregor' as a trademark for the sale of clothing, footwear and sportswear across the EU.

Conor McGregor leaves Blanchardstown Court, Dublin, where he is charged with dangerous driving in relation to an incident in west Dublin in March. Picture date: Thursday September 8, 2022.© PA

Conor McGregor

Gordon DeeganIndependent.ie

The gloves are off as Mixed Martial Arts (MMA) star Conor McGregor is engaged in a fresh fight to cash in on his brand across the EU.

This follows a Dutch-based firm, McGregor IP B.V., opposing the Dubliner's second application to register 'Conor McGregor' as a trademark for the sale of clothing, footwear and sportswear across the EU.

The Dutch clothing firm was previously successful in December 2020 in opposing an earlier application by the Dublin-based McGregor Sports and Entertainment Ltd (MSEL) to register 'Conor McGregor' as a trademark after a four-year battle.

The Dubliner's firm’s current application is again being frustrated by the Holland-based firm which acquired the complete ‘McGregor’ trademark portfolio and all other McGregor intellectual property (IP) rights in October 2017.

Conor McGregor’s MSEL previously applied for registration of various other EU trademarks with the element 'McGregor’ such as McGregor F.A.S.T., McGregor Combat, McGregor Productions, The McGregor Follows and the Dutch company also successfully opposed each of these EU trademark applications.

However, McGregor’s MESL has again employed Dublin-based intellectual property law experts, legal firm FR Kelly, to advance the case for the proposed 'Conor McGregor' brand.

Conor McGregor

According to the latest figures from Forbes, McGregor is ranked 35th in its 2022 top highest earning athlete rankings earning $43m over a 12-month period.

The Dutch company argues there is a likelihood of confusion amongst the public between the McGregor and the Conor McGregor trademarks.

However, in a submission to the European Union Intellectual Property Office (EUIPO), FR Kelly denies that the trademarks are similar.

As part of a seven-page submission, FR Kelly states that the respective trade marks can be readily distinguished and, as a result, the average consumer will not believe that the goods of 'Conor McGregor' originate from 'McGregor'.

The submission goes on to state that when the trademarks are compared in their entirety and not dissected or broken down into individual components, the differences between the respective trademarks “is such that there is no likelihood of confusion”.

FR Kelly states that the McGregor opposition “should be rejected in its entirety” and the EU office should proceed to register the Conor McGregor trademark.

It places a heavy emphasis on the name ‘CONOR’ in its rebuttal of the Dutch firm’s opposition to the proposed Conor McGregor trademark.

It says that the addition of the word CONOR is to distinguish the respective trademarks such that there would be no likelihood of confusion.

It argues that the scope of the protection afforded by the earlier rights of the Dutch firm cannot be used to prevent the registration of trademarks continuing the surname McGregor.

The submission states that “to hold otherwise would, in our submission, provide a greater monopoly to those markets than that to which they are entitled”.

FR Kelly contends “the mere fact that respective trademarks share an element in common is not sufficient to hold a likelihood of confusion”. It argues that “there is no case law to support such a position”.

The Schipol-based firm points out McGregor IP is fully owned by McGregor Fashion Group B.V. which designs, manufactures, distributes and sells mainly apparel and accessories under the McGREGOR brand.

The firm’s solicitors argue that the element CONOR in the Conor McGregor trademark application “will have a minimum if not negligible impact on the assessment of the likelihood of confusion between the marks” and the public could perceive the contested Conor McGregor trademark as a sub-brand of the McGREGOR trademarks.

The Dutch firm argues that consumers might believe the goods covered by the contested Conor McGregor trademark are part of the products marketed by McGregor IP.


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