Lawyers for mixed martial arts star, Conor McGregor, have hit back in the European brand war concerning the sports star’s bid to cash in on his brand across Europe.
This follows Dublin-based lawyers, FR Kelly, lodging the appeal to the European Union Intellectual Property Office (EUIPO) as to why Mr McGregor’s application to register the name ‘Conor McGregor’ as a trademark should succeed.
EUIPO turned down the trademark application by the Dubliner’s McGregor Sports & Entertainment Ltd (MESL) in February 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 February ruling, EUIPO 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.
However, top European Patent and Trade Mark experts retained by McGregor, FR Kelly have told the EUIPO that there is no likelihood of confusion between the two.
The eight-page submission argues that the differences between the respective trademarks or brands would not lead consumers to believe that they are brand extensions.
The Dublin-based law firm argues that the scope being afforded to the Dutch company’s trademark “is far too broad given the circumstances of this case”.
FR Kelly said that the EUIPO decision is effectively stating, incorrectly in its submission, that a registration of a trademark containing a surname can prevent registration of another trademark with the same surname on the basis that the consumer will believe that any and all such trademarks originate from or are associated with the owner of the earlier right.
FR Kelly state: “It is our submission that this is flawed and that the surname in question would have to be extremely rare to support such a finding and grant such a wide monopoly.”
FR Kelly further state that it is a general and accepted principle of law that a party should be free to use their own name provided such use is in accordance with honest practices.
The company said that the case should, at the very least, be referred back for a fuller and complete decision to be issued.
They said: "Failure to do so is prejudicial to the appellant.”