Conor McGregor loses rematch to register his brand in the EU

The EU agency said "there is a likelihood of confusion" over McGregor IP B.V.'s own trademark and the proposed 'Conor McGregor' trademark

According to the latest figures from Forbes, Conor McGregor (pictured) is ranked 35th in its 2022 top highest earning athlete rankings earning $43m over a 12-month period. File picture: Colin Keegan

Mixed Martial Arts (MMA) star, Conor McGregor has suffered a knockout blow in his plans to cash in on his brand across the EU in an effective "rematch" with a Dutch firm.

This follows an EU agency upholding the objections of Holland-based firm McGregor IP B.V. against the application by the Dubliner's company, McGregor Sports and Entertainment Ltd (MSEL), to register 'Conor McGregor' as a trademark for the sale of clothing, footwear and sportswear across the EU.

The Dutch firm designs, manufactures, distributes and sells mainly apparel and accessories under the McGREGOR brand.

In its decision, the Spanish-based EU Intellectual Property Office (EUIPO) has rejected the trademark application after finding that "there is a likelihood of confusion", including a likelihood of association, on the part of the public concerning McGregor IP B.V.'s own trademark and the proposed 'Conor McGregor' trademark.

The EUIPO found that McGregor IP B.V.’s opposition is well founded and that MSEL must bear the fees and costs incurred by the Dutch clothing firm. The decision by the EUIPO is the second time that the office has refused MSEL to register the 'Conor McGregor' brand after opposition from McGregor IP B.V.

The Dutch firm was previously successful in December 2020 opposing an earlier application by MSEL to register 'Conor McGregor' as a trademark after a four-year battle. The Holland-based firm acquired the complete ‘McGregor’ trademark portfolio and all other McGregor intellectual property (IP) rights in October 2017.

In the current case, McGregor’s MESL again employed Dublin-based intellectual property law experts, FRKelly, to advance the case for the proposed 'Conor McGregor' brand.

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.

EUIPO ruling

In its seven-page decision, the EUIPO stated that likelihood of confusion covers situations where the consumer directly confuses the trademarks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The office found: “Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark ‘CONOR McGREGOR’ as a sub-brand, a variation of the earlier trademarks, configured in a different way according to the type of goods that it designates.” 

The EUIPO also found that even if the contested trademark has a different beginning with the first name being ‘CONOR’, this cannot outweigh the similarities produced by the common surname ‘McGREGOR’, which is independent and distinctive in both signs.

Conor McGregor argument

In a submission to the EUIPO, FRKelly denied that the trademarks are similar. As part of a seven-page submission, FRKelly stated that the respective trademarks 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 went 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”.

FRKelly also stated that the clear and obvious differences between the trademark of Conor McGregor and McGregor “are such that there would be no likelihood of confusion”.

The top European Patent and Trademark experts retained by McGregor stated 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 stated that “to hold otherwise would, in our submission, provide a greater monopoly to those markets than that to which they are entitled”. McGregor’s MESL firm now has the option of appealing the EUIPO ruling.