Mixed Martial Arts (MMA) star Conor McGregor has launched a fresh fight to cash in on his brand in the European Union.
Dutch-based firm McGregor IP B.V. opposed the Dubliner's second application to register 'Conor McGregor' as a trademark for the sale of clothing, footwear and sportswear across the EU.
The Dutch clothing firm was previously successful in its opposition of an earlier application by the Dublin-based McGregor Sports and Entertainment Ltd (MSEL) to register 'Conor McGregor' as a trademark after a four-year battle.
The Dutch firm, which acquired the complete ‘McGregor’ trademark portfolio and all other McGregor intellectual property (IP) rights in October 2017, is again contesting the fresh application.
McGregor’s MSEL previously applied for registration of various other EU trademarks with the 'McGregor' element, such as McGregor F.A.S.T., McGregor Combat, McGregor Productions, The McGregor Follows. The Dutch company successfully opposed each of these EU trademark applications.
However, MESL has again employed Dublin-based intellectual property law experts FR Kelly 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 $43 million over a 12-month period.
The Dutch company argues there is a likelihood of confusion amongst the public between the 'McGregor' and the 'Conor McGregor' trademarks.
However, in a submission to the European Union Intellectual Property Office (EUIPO), FR Kelly denies the trademarks are similar.
As part of a seven-page submission, FR Kelly states 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 goes 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”.
FR Kelly states the McGregor opposition “should be rejected in its entirety” and the EU office should proceed to register the 'Conor McGregor' trademark.
The legal firm also places a heavy emphasis on the name ‘CONOR’ in its rebuttal of the Dutch firm’s opposition, stating that the addition of the word CONOR is to distinguish the respective trademarks such that there would be no likelihood of confusion.
'Monopoly'
The fighter's representatives said the scope of the protection afforded by the earlier rights of the Dutch firm cannot be used to prevent the registration of trademarks containing the surname McGregor.
The submission adds that “to hold otherwise would, in our submission, provide a greater monopoly to those markets than that to which they are entitled”.
FR Kelly contends “the mere fact that respective trademarks share an element in common is not sufficient to hold a likelihood of confusion,” adding: “There is no case law to support such a position”.
The opposing firm’s highlights that McGregor IP is fully owned by McGregor Fashion Group B.V. which designs, manufactures, distributes and sells mainly apparel and accessories under the McGREGOR brand.
The firm’s solicitors argue that the element CONOR in the 'Conor McGregor' trademark application “will have a minimum if not negligible impact on the assessment of the likelihood of confusion between the marks”, adding that the public could perceive the contested trademark as a sub-brand of the McGREGOR trademarks.
The Dutch-firm also said consumers might believe the goods covered by the 'Conor McGregor' trademark are part of the products marketed by McGregor IP.
