The gloves come off as mixed martial arts (MMA) star Conor McGregor engages in a new fight to capitalize on his brand across the EU.
This follows a Netherlands-based firm, McGregor IP BV, which has opposed the Dubliner’s second application to register “Conor McGregor” as a trademark for the sale of clothing, shoes and sportswear across the EU.
The Dutch clothing company previously succeeded in December 2020 against an earlier application by Dublin-based McGregor Sports and Entertainment Ltd (MSEL) to register “Conor McGregor” as a trademark after a four-year battle.
The Dublin firm’s current filing is once again thwarted by the Netherlands-based firm, which acquired McGregor’s full ‘McGregor’ trademark portfolio and all other 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 FAST, 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 hired Dublin-based intellectual property experts, law firm FR Kelly, to advance the case for the proposed ‘Conor McGregor’ trademark.
According to the latest numbers forbesMcGregor ranks 35th in its 2022 ranking of highest-earning athletes, earning $43 million over a 12-month period.
The Dutch company argues that there is a risk of confusion between the McGregor and Conor McGregor brands in the public eye.
However, in a filing with the European Union Intellectual Property Office (EUIPO), FR Kelly denies that the marks are similar.
In a seven-page submission, FR Kelly argues that since the respective marks are easily distinguishable, the average consumer will not believe that “Conor McGregor’s” goods came from “McGregor”.
The submission goes on to say that when the marks are compared as a whole rather than broken down or broken down into individual components, the differences between the respective marks are “sufficient to avoid confusion”.
FR Kelly states that McGregor’s opposition “should be dismissed in its entirety” and the EU Office should proceed with the registration of the Conor McGregor trademark.
It places great emphasis on the name “CONOR” in its rebuttal of the Dutch firm’s opposition to the proposed Conor McGregor brand.
The addition of the word CONOR is intended to distinguish the respective marks in such a way that there is no likelihood of confusion.
She argues that the scope of protection afforded by the Dutch firm’s prior rights cannot be used to prevent registration of marks continuing the McGregor surname.
The submission states that “to do otherwise would, in our view, give these markets a greater monopoly than they deserve.”
FR Kelly submits that “the mere fact that the respective marks share an element is not sufficient to create a likelihood of confusion”. It argues that “there is no case law to support such a position”.
The Schipol-based company points out that McGregor IP is wholly owned by McGregor Fashion Group BV, which mainly designs, manufactures, distributes and sells clothing and accessories under the McGREGOR brand.
Lawyers for the firm argue that the CONOR element in Conor McGregor’s trademark application “will have a minimal, if not negligible, impact on the assessment of likelihood of confusion between the marks” and the public could perceive the contested Conor McGregor mark as a sub-mark of the McGREGOR- Trademark.
The Dutch company argues that consumers may believe that the goods protected by the contested Conor McGregor trademark are part of the products sold by McGregor IP.
https://www.independent.ie/irish-news/news/gloves-are-off-as-conor-mcgregor-fights-clothing-firm-in-trademark-battle-42039883.html The gloves come off as Conor McGregor battles the clothing company in a trademark dispute