EU’ll DO NOTHIN’!

McGregor V…McGregor and the importance of Mediation and Co-Existence Agreements in Exploiting Your Brand. 

A recent decision of the European Union Intellectual Property Office has beaten down an application by Irish mixed martial artist Conor McGregor to file an application for an EU trade mark. 

A Dutch-based company, McGregor IP B.V., has a pre-existing registered EU trade mark for men’s clothing that it acquired in 2017 and trades under the brand ‘McGregor New York’. This Dutch company successfully opposed Mr McGregor’s application to register ‘CONOR MCGREGOR’ as an EU trade mark for clothing, footwear and sportswear across all 27 member states. 

The EUIPO disagreed with the Crumlin man and his legal team’s submission in the opposition hearing that the public would not be confused and think that goods bearing the ‘CONOR MCGREGOR’ trade mark would be from the Dutch company and vice versa. The EUIPO stated that “there is a likelihood of confusion”, including a likelihood of association, on the part of the public, concerning McGregor IP B.V.’s own trade mark and the proposed ‘Conor McGregor’ trade mark that the Dubliner wanted to register. 

The matter demonstrates the importance of getting early, expert advice when considering brand exploitation, even if the brand is your own name. Properly drafted co-existence agreements can, if the parties are both amenable, allow similar brands to exist in the market. A much cheaper and less expensive solution than fighting an opposition claim in court or the EUIPO – and definitely safer than settling matters in the Octagon! 

If you have any queries about your trade mark in Ireland, or there is someone trading under a confusingly similar name in the EU or elsewhere, Briffa can help you assess the best way to reach a mutually satisfactory fix. To book a free consultation, with one of our specialist IP lawyers, contact us on info@briffa.com.