November 12, 2019
It’s been a while since Conor’s been in the IP limelight, especially when it comes to registering trade marks. However, following on from a few months back discussing McGregor’s difficulty with trade mark registration it looks as if McGregor’s legal team aren’t willing to back down from this fight.
Just by way of background, McGregor Sports and Entertainment handles the majority of the sports star’s Irish business and filed an EU trade mark application for his name in 2017. If approved, the ‘Conor McGregor’ mark would cover classes 3, 9, 16, 25, 28, 41, 43, 44, including goods and services such as aftershave, clothing, video games, gyms, and hair salons.
The legal team for McGregor have now hit back at a Dutch Fashion company trying to block the UFC star registering his own name as a trade mark across the EU. The fashion company sells clothing and accessories under their registered brand name ‘McGREGOR’ and has informed the European Union Intellectual Property Office (EUIPO) that Conor’s trade mark application will cause confusion to the public. Now, in response McGregor’s legal team have prepared a six-page defence rebuttal submission to the EUIPO denying such matters of confusion between the two brands. The legal team submission states that the application inclusion on CONOR is sufficient to distinguish it from the Dutch brand.
The legal team have come out and said, “the mere fact that respective trade marks share an element in common is not sufficient to hold a likelihood of confusion. There is no case law to support such a position.”
The solicitors said 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.
Finally, the legal team said that the Dutch company’s opposition should be rejected in its entirety and Conor McGregor should proceed to registration while an award of costs should be made in favour of the Conor McGregor company.
Now it is difficult to say whether the EUIPO will accept the defence on the basis that the Irish star’s application contains Conor and the whole application therefore differs from the prior registration, as the decision will very much be subjective from the point of the EUIPO. Although Conor’s team have made arguments and grounds that there is no case law to support elements being shared to uphold confusion, the application still wholly incorporates ‘McGregor’ and with the prior registration being a word mark filing which gives the owner much broader and wider protection over the registration and its rights to enforce and oppose such application. It would therefore be a question to the EUIPO as to whether Conor in the UFC fighter’s application is enough to be distinctive.
That being said, should the decision not go through for Conor and his team than there our other means they can seek to get this application through but this is definitely worth keeping an eye out and we will certainly be following this to know the final results!
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
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