Gloves are off as McGregor loses trademark battle

Things aren’t going Conor McGregor’s way – and we’re not just talking about his title fight loss over the weekend against Khabib Nurmagomedov.  The defeat will have come as a second blow for the MMA featherweight’s fans, following McGregor’s recent trade mark battle in the Dutch Court where he lost a claim relating to the use of his name on a clothing range.

Here are the stats from the Dutch District Court case on 10 August 2018.

In one corner…Reebok/McGregor

In 2015, McGregor, teamed up with adidas subsidiary, Reebok, to launch the “Conor McGregor Collection”, a range of high-end sportswear. The range featured the name CONOR McGREGOR but with the CONOR in comparatively small font. McGregor’s company applied to the European Trade Mark Office (EU IPO) to register his name (CONOR McGREGOR) as a trade mark covering a variety of goods and services, including those in class 25 (clothing).

In the other corner… McGregor IP BV (“MIB”)

MIB is an Amsterdam-based fashion label that has been selling high-end menswear since the 1920s. According to the company’s website, “McGregor” was the clan from which David Doniger, the renowned Scottish milliner who set up the company, was descended.

MIB’s ‘pre-fight’ message to McGregor

MIB objected to McGregor’s trade mark application and to the use of “McGregor” in the sportswear designed for the collection. They sent a cease and desist letter to Reebok, demanding that they cease selling the McGREGOR range, saying that it would lead to confusion: people would, they claimed, be confused into thinking it was an MIB range. Reebok refused to tap out, so MIB opposed the trade mark application and applied to the court for an injunction preventing adidas from selling the “Conor McGregor” emblazoned range.

Parry, parry…

The Dutch company asserted that the prominence of the name “McGregor” – compared to the ‘miniscule’ “Conor” – on the rival clothing range was such that it was likely to cause, or had caused, confusion in the eyes of the general public (as per Article 9(2)(b) of the European Trade Mark Regulation 2017).

adidas tried to dodge this punch by comparing McGregor to other sports personalities such as Ronaldo, arguing that his mass appeal was so distinctive that everyone would know this was a ‘Connor McGregor’ range, that there was no likelihood of confusion with MIB and, therefore, no infringement.

The judge’s decision

The Dutch court was not won over by adidas’ argument, noting that MMA is not as popular a sport as football is in Europe and that the general public (MMA fanatics excluded) were unlikely to recognise “McGregor” as referring to the Irish fighter.

Further, the MIB brand was deemed to be sufficiently established throughout Europe that there was highly likely to be confusion generated by the Reebok range.

The court ordered adidas to stop selling the “Conor McGregor” range anywhere in Europe within seven days of the judgement and to pay €15,700 of MIB’s legal fees. The court also ruled that if adidas was to continue selling the infringing clothing after the seven days was up, compensation of €1,000 a day would be payable, up to a maximum of €250,000.

Live to fight another day

Since the judgment only applies to the current designs of the “Conor McGregor Collection”, the McGregor/Reebok team could still launch a range that exploits the MMA star’s name without infringing any trade mark rights. A more prominent ‘Conor’ might be sufficient. Back to the drawing board/punch bag…

And some takeaways…

The ‘own name’ defence for businesses was removed in respect of EU trade marks last year when the EU Trade Mark Regulation 2017 took effect. The UK trade marks office (UK IPO) has not yet implemented that part of the regulation but has said it will do so before the January 2019 deadline. Might McGregor have been able to defend the infringement claim if he had exploited the trade mark as an individual and not through his company? Possibly, though that would not have helped Reebok/adidas.

The case is a lesson in the importance of running clearance searches prior to launching new brands – apparently that was not done here. And also a lesson for celebrities and their representatives on the potential limits on their ability to exploit their own names. Always sensible to take some advice before you’re in a headlock…