Mixed martial arts fighter Conor McGregor’s second application to trademark his name for the sale of clothing, footwear and sportswear across the European Union has again been opposed by Dutch-based firm McGregor IP BV.
The Dutch clothing firm was previously successful in December 2020 in opposing an earlier application by the Dublin-based McGregor Sports and Entertainment Ltd (MSEL) to register “Conor McGregor” as a trademark.
McGregor IP BV acquired the complete “McGregor” trademark portfolio and all other McGregor intellectual property rights in October 2017.
However, Conor McGregor’s MSEL has again employed Dublin intellectual property law experts, FR Kelly to advance the case for the proposed “Conor McGregor” brand.
According to the latest figures from Forbes, Conor McGregor is ranked 35th in its 2022 top highest-earning athlete rankings, earning $43 million (€43 million) over a 12-month period.
The Dutch company argues that there is a likelihood of confusion between their McGregor and the Conor McGregor trademarks.
However, in a submission to the EU Intellectual Property Office (EUIPO), FR Kelly denies that the trademarks are similar.
As part of a seven-page submission, FR Kelly said that the respective trademarks could be readily distinguished and, as a result, the average consumer would not believe that the goods of “Conor McGregor” originate from “McGregor”.
FR Kelly said that the McGregor opposition “should be rejected in its entirety” and the EU office should proceed to register the Conor McGregor trademark.
FR Kelly said the clear and obvious differences between the trademarks of Conor McGregor and McGregor “are such that there would be no likelihood of confusion”.
The legal firm also said that the scope of the protection afforded by the earlier rights of the Dutch firm could not be used to prevent the registration of trademarks continuing the surname McGregor.
The submission said that “to hold otherwise would, in our submission, provide a greater monopoly to those markets than that to which they are entitled”.
The Dutch firm argued that consumers might believe that the goods covered by the contested Conor McGregor trademark were part of the products marketed by McGregor IP.