Lawyers for Conor McGregor have hit back at a Dutch company trying to block the mixed martial arts star registering his own name as a trademark across the EU.
In 2017, Conor McGregor’s main firm here, McGregor Sports & Entertainment Ltd (MESL), lodged an application with the EU seeking to register the ‘Conor McGregor’ trademark.
However, Dutch firm, McGregor IP B.V. is opposing the move.
The company sells clothing and accessories under the ‘McGREGOR’ brand and has told the European Union Intellectual Property Office (EUIPO) at Alicante in Spain that consumers might believe that goods sold by Conor McGregor’s firm are part of products marketed by McGregor IP.
Now, in response, lawyers for McGregor, European Patent and Trade Mark experts, FR Kelly deny that the two brands will be confused.
In a new six-page rebuttal submission to the EUIPO, the Dublin-based FR Kelly state that the trade mark application by the Conor McGregor company differs by the fact that it contains the forename CONOR which is not present in the Trade Marks of McGregor IP B.V.
FR Kelly say that the Dutch company alleges that the CONOR element will be considered non distinctive or at least distinctive to a low degree and that the public could perceive the trademark of the Conor McGregor company to be a sub-brand of McGregor IP B.V.
They say: “This is denied.”
“The mere fact that respective Trade Marks share an element in common is not sufficient to hold a likelihood of confusion. There is no case law to support such a position.”
The solicitors said that when the two trade marks are compared in their entirety the differences are such that the consumer would not mistakenly believe that the goods sold originate from the Dutch McGregor company.
The Dublin 4 based legal firm said that “the clear and obvious differences" between the trade mark of the Conor McGregor company and those of the Dutch McGregor company “are such that there would be no likelihood of confusion”.
FR Kelly also said that the Dutch McGregor company's opposition should be rejected in its entirety and Conor McGregor should proceed to registration while an award to costs should be made in favour of the Conor McGregor company.
A spokesman for the EUIPO said they hope to make a decision on the application next year.
Last year, McGregor's plans to obtain a trademark for his planned ‘Notorious’ whiskey came unstuck after he withdrew his trademark application for the whiskey in the face of opposition from a Carlow brewer who had already secured the trademark for ‘Notorious'.
McGregor subsequently launched his whiskey, settling on his second choice name, ‘Proper No Twelve’ for the brand.