The well-known UFC and mixed martial arts fighter, Conor McGregor, has suffered a setback in his attempt to register his name as a European trade mark in relation to clothing and footwear in class 25.
His application was challenged by the Dutch company McGregor IP B.V, owners of the McGregor Fashion Label, which has sold clothing using the clan's official tartan since 1921 under the trade marks 'McGREGOR and 'D.D. McGREGOR'.
This is not the first time the parties have come to a head over IP rights concerning the McGregor name. In 2018, McGregor Fashion Label obtained an injunction throughout the EU banning the sale of Mr McGregor's clothing, which had been manufactured by Reebok and bore his signature in large letters. However, Mr McGregor subsequently filed the present trade mark application in the EU for the mark CONOR McGREGOR covering a wide range of goods and services, including clothing and footwear. Unsurprisingly, McGregor IP opposed the application.
In reaching a decision in the opposition proceedings, the EU Trade Marks Office concluded that consumers were likely to perceive Mr McGregor's mark as a different line of clothing stemming from McGregor IP or otherwise economically linked to McGregor IP. This was particularly heightened by the distinctiveness of the name 'McGregor' to the relevant public in the Netherlands, Finland and the Scandinavian countries, and the importance of surnames (as opposed to first names) as indicators of trade origin in the fashion industry.
As a result, Mr McGregor's EU trade mark application was rejected in relation to clothing and footwear, although the application will be allowed to proceed in relation to the remaining goods and services covered.
This case serves as a reminder that seeking protection of a name as an EU trade mark can have various consequences depending on the perception of the name within the relevant territory, and highlights the importance of obtaining specialist legal advice before filing any trade mark application. Despite his success in the ring, this is one battle for which the UFC champion is yet to be crowned king.
Originally published 24 April 2020
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