‘Down but not out’ for McGregor bid
Superstar’s company appeals trademark refusal
IT is down but not out for mixed martial arts superstar Conor McGregor’s bid to cash in on his brand across the EU.
In February, McGregor’s bid to register the name Conor McGregor as a trademark for the sale of clothing across the EU hit the canvas after the European Union Intellectual Property Office (EUIPO) rejected the application.
Now McGregor has fresh hope for his Europe-wide brand plan with Dublin-based lawyers FRKelly formally lodging an appeal against the decision on his behalf.
EUIPO turned down the trademark application by the Dubliner’s McGregor Sports and Entertainment Ltd (MSEL) after upholding an objection by a Dutch clothing firm, Schiphol-based McGregor IP BV.
The Dutch firm sells clothing and accessories under the McGregor brand and told the EUIPO consumers might believe goods sold by Conor McGregor’s firm were part of products marketed by the company.
Paul Kelly, senior associate at FRKelly, said in a letter to EUIPO that “a statement of grounds in support of the appeal will be filed within two months”.
In the February ruling, EUIPO rejected Conor McGregor’s trademark application for the sale of clothing, footwear and headgear but said it can proceed for the remaining goods and services sought.
The EU trademark office refused the trademark for clothing due to the likelihood of confusion among the public concerning the proposed Conor McGregor brand and the DD McGregor brand used by McGregor IP BV.
The office also found, contrary to the Conor McGregor company’s opinion, the trademark signs of the applicant and the Dutch opponent “are visually and aurally similar to an average degree”.
The appeal is the latest chapter in the three-and-a-half-year battle between Conor McGregor’s MSEL and McGregor IP concerning the disputed trademark. MSEL lodged the application in January 2017 and the Dutch firm gave notice that it was objecting to the trademark four months later.
The Dutch company said 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 Jr.
McGregor IP relaunched the McGregor brand in the European market. It explained that the McGregor-branded products are being sold under licence from McGregor IP through bricks and mortar stores and online in the EU.
In a six-page rebuttal submission to the EUIPO last autumn, FRKelly said “the clear and obvious differences” between the trademark of the Conor McGregor company and those of the Dutch McGregor company “are such that there would be no likelihood of confusion”.
The decision was McGregor’s second setback at the EU trademark office. In 2018, his attempt to obtain a trademark for his planned Notorious whiskey came unstuck after he withdrew his application. He subsequently launched his whiskey under his second-choice name, Proper No. Twelve.