'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 for McGregor formally lodging an appeal against the decision.
EUIPO turned down the trade-mark application by the Dubliner’s McGregor Sports & Entertainment Ltd (MESL) 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.
However, top European Patent and Trade Mark experts retained by McGregor, FR Kelly have lodged the appeal papers with the EUIPO.
Senior Associate at FR Kelly, Paul Kelly in a letter to the EUIPO has stated 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 amongst the public concerning the proposed Conor McGregor brand and the DD McGregor brand used by McGregor IP B.V.
The office stated that it did not share Conor McGregor company’s opinion that the names in conflict show significant differences in terms of their lengths and overall composition.
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".
In adjudicating on the contest, the EU office found it appropriate to focus on the public in the Netherlands, Finland and the Scandinavian countries, where it stated consumers have a basic understanding of English.
The EU office stated that the registered and proposed trademarks coincide in an unusual family name.
The office found that there is a likelihood of confusion on the part of the public in the Netherlands, Finland and the Scandinavian countries and a likelihood of confusion for only part of the relevant public of the EU is sufficient to reject the contested application.
The appeal is the latest chapter in the three and a half year battle between Conor McGregor's MESL and McGregor IP concerning the disputed trademark.
MESL lodged the application in January 2017 and the Dutch firm gave notice that it was objecting to the trade market four months later in May 2017
The Dutch company stated that it acquired the complete McGREGOR trademark portfolio and all other McGregor intellectual property rights on October 15th 2017 - two months after Conor McGregor's fight with Floyd Mayweather.
McGregor IP relaunched the McGREGOR brand in the European market.
It explained that the McGREGOR branded products are being sold under license from McGregor IP through 'bricks and mortar' stores and online within the EU.
The Dutch firm stated that the overall impression produced by the proposed 'Conor McGregor' trademark may lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.
In response, lawyers for Conor McGregor, FR Kelly denied that the two brands would be confused.
In a six page rebuttal submission to the EUIPO last Autumn, the Dublin based FRKelly stated that the trade mark application by the Conor McGregor company differs by the fact that it contains the forename CONOR which is not present in the Trade Marks of McGregor IP B.V.
The solicitors stated that when the two trade marks are compared in their entirety the differences are such that the consumer would not mistakenly believe that the goods sold originate from the Dutch McGregor company.
The Dublin 4 based legal firm stated that "the clear and obvious differences" between the trade mark of the Conor McGregor company and those of the Dutch McGregor company "are such that there would be no likelihood of confusion".
The February decision was McGregor’s second setback at the EU trademark office.
In 2018, McGregor's plans to obtain a trademark for his planned 'Notorious’ whiskey came unstuck after he withdrew his trademark application for the whiskey in the face of opposition from a Carlow brewer who had already secured the trademark for ‘Notorious'.
McGregor subsequently launched his whiskey, settling on his second choice name, ‘Proper No Twelve’ for the brand.