Mixed martial arts superstar Conor McGregor’s bid to cash in on his brand across the EU has suffered a knockout blow.
It follows the European Union Intellectual Property Office (EUIPO) at Alicante in Spain rejecting McGregor’s application to register the name ‘Conor McGregor’ as a trademark for the sale of clothing across the EU.
EUIPO has turned down the application by the MMA star’s McGregor Sports & Entertainment Ltd (MESL) after upholding an objection by a Dutch clothing firm, Schiphol-based McGregor IP B.V. against the application.
The Dutch company sells clothing and accessories under the ‘McGREGOR’ brand and told the EUIPO that consumers might believe that goods sold by Conor McGregor’s firm are part of products marketed by the company.
In the ruling, EUIPO has rejected Conor McGregor’s trademark application for the sale of clothing, footwear and headgear but can proceed for the remaining goods and services sought.
The EU trademark office refused the trademark for clothing due to the likelihood of confusion amongst the public concerning the proposed Conor McGregor brand and the DD McGregor brand used by McGregor IP B.V.
The office stated that it does not share the Conor McGregor company’s opinion that the names in conflict show significant differences in terms of their lengths and overall composition.
The office also found contrary to the Conor McGregor company’s opinion that the trademark signs of the applicant and the Dutch opponent “are visually and aurally similar to an average degree”.
In adjudicating on the contest, the EU office found it appropriate to focus on the public in the Netherlands, Finland and the Scandinavian countries, where it stated consumers have a basic understanding of English.
The EU office said that the registered and proposed trademarks coincide in an unusual family name.
The office found that there is a likelihood of confusion on the part of the public in the Netherlands, Finland and the Scandinavian countries and a likelihood of confusion for only part of the relevant public of the EU is sufficient to reject the contested application.
The office also has ordered the McGregor company to pay the fees and costs incurred by the Dutch company in the action.
The McGregor company now has the option of appealing the decision.
The decision follows a three-year battle between Conor McGregor's MESL and McGregor IP concerning the proposed trademark.
MESL lodged the application in January 2017 and the Dutch firm gave notice that it was objecting to the trade mark four months later in May 2017
The Dutch company said that it acquired the complete McGREGOR trademark portfolio and all other McGregor intellectual property rights on October 15, 2017 - two months after Conor McGregor’s fight with Floyd Mayweather.
McGregor IP relaunched the McGREGOR brand in the European market.
It explained that the McGREGOR branded products are being sold under license from McGregor IP through 'bricks and mortar' stores and online within the EU.
The Dutch firm said that the overall impression produced by the proposed 'Conor McGregor' trademark may lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.
In response, lawyers for Conor McGregor, European Patent and Trade Mark experts, FR Kelly denied that the two brands would be confused.
In a six-page rebuttal submission to the EUIPO last Autumn, the Dublin-based FR Kelly said 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.
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”.
The decision is McGregor’s second setback at the EU trademark office.
In 2018, 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.