Conor McGregor, the former Ultimate Fighting Champion (UFC) in the featherweight and lightweight divisions, is having yet another dispute trying to register a trade mark in the EU. McGregor is well known for his high profile mixed martial arts fights and his persona in letting everyone know “he is the best at what he does,” whether that’s his fighting styles and skills or entrepreneurial skills.
McGregor has been challenged on a number of his trade mark applications, most of them being opposed. McGregor has tried to register his name as a trade mark which, most frustratingly, was successfully opposed by a Dutch fashion company which owns the mark ”McGregor”. Another application his team filed was for the trade mark “Notorious,” which is a well-known nickname for the former champion; however this also received oppositions from two companies, one for clothing and another for alcohol.
The former champion also tried to register “I am Boxing” which was again opposed, so he then applied for “Champchamp” which was once again opposed, and this time by both Champion Sports and Champ, a company who deals with footwear.
Just when matters cannot get worse for McGregor, his current dispute is for the application to register the trade mark “Mystic Mac.” This mark has been quickly opposed by the large cosmetic company MAC.
McGregor is really not having much luck with trade marks right now, but I am sure these hiccups will not stop him from applying for more trade marks in the future.
Although unfortunate to not be able to register his name as a trade mark, most of the other marks McGregor has filed are either descriptive, lack distinctiveness, or are already registered in a similar form (hence the opposition from third parties).
Registering a trade mark gives the applicant exclusive monopoly rights indefinitely (if renewed every ten years) to use this mark as they see fit. It’s important to note that registered trade marks are territorial and so the exclusive rights are country specific (although it is possible to register a single trade mark which covers all EU member states). However, applying for a trade mark can be an expensive process if things are not done correctly and no one wants to throw good money away.
Trade marks must not be descriptive and must be distinctive; otherwise they are likely to be rejected by a trade mark examiner. If the mark is distinctive, and not descriptive, then the application would proceed to the publication stage which allows third parties to view the trade mark before it is registered. This is the stage in which third parties can oppose the application.
This is why we suggest searches should be carried prior to filing the trade mark to make sure that the trade mark being filed fits the criteria and does not conflict with earlier marks.
If there is a potential possibility of the trade mark being opposed or rejected, then further analysis can be undertaken on the risks and likely chances of success.
Briffa advises on all aspects of trade mark law and practice and offers free consultations to all new clients. If you would like to have a call or a meeting at our offices in the Business Design Centre in London, please call 020 7288 6003 or email email@example.com.
Written by Hasnath Ahmed, Solicitor