Conor McGregor is the well-known UFC and MMA fighter who has recently come back into the IP spotlight following a string of disputes at the EUIPO. Over recent years, McGregor has looked to expand on his notoriety with a range of filings for rights in his name and various nicknames. Novagraaf’s Claire Jones tackles the disputes.
Through his company McGregor Sports and Entertainment Limited, McGregor filed applications at the Irish PTO for the marks ‘Conor McGregor’ and ‘The Notorious’, in July 2016, for a range of goods and services. Eighteen months on, these applications are still pending.
Searches on the EUIPO database showing that out of the eight trademarks in the company name at the EUIPO, six are currently the subject of opposition proceedings, namely:
- Conor McGregor – Opposed by Doniger Fashion Group BV on the basis of earlier rights in the marks ‘McGregor’ and “DD McGregor’;
- The Notorious – Opposed by Andrew & John Underwood on the basis of earlier rights in the mark ‘Notorious Fightwear’;
- Notorious – Opposed by Seamus O’Hara on the basis of earlier rights in the mark ‘Notorious’;
- I Am Boxing – Opposed by Migros-Genossenschafts-Bund on the basis of earlier rights in the marks ‘I Am’ and ‘I Am Men’;
- ChampChamp – Opposed by Cleats LLC on the basis of earlier rights in the mark ‘Champ’, as well as Champion Products Europe Limited on the basis of earlier rights in the mark ‘Champion’; and
- Mystic Mac – Opposed by Make-Up Art Cosmetics Inc on the basis of earlier rights in the marks ‘M.A.C.’ and ‘MAC’, and MAC Mode GmbH 7 Co KgaA on the basis of earlier rights in the mark ‘MAC’.
This is not the first time that McGregor has experienced IP issues. In 2016, an individual, Gazala Khan, applied for three UK trademarks and one EUTM incorporating ‘Conor McGregor’ and ‘Notorious’ for a wide range of classes (the UK applications were refused). McGregor opposed the EU application on the basis of his earlier rights in his name and nickname.
In addition, she registered the domain names conormcgregorthenotorious.com, conorthenotoriousmcgregor.com and thenotoriousconormcgregor.net.
McGregor has also experienced issues with registering his ‘Notorious’ nickname in the US, on the basis of the earlier rights of the Christopher Wallace estate (the rapper known as Notorious BIG).
It is not surprising, therefore, that McGregor is looking to protect his brand going forward for use in potential commercial deals, including suggestions of restaurants, clothing, video games and alcohol. However, the various oppositions show the importance of conducting pre-filing searches to assess the availability of a mark before application. Simply because an individual has become well-known does not automatically give rise to trademark protection, and earlier trademark rights should always be given consideration. Not only can such rights cause issues with registration, but there is the wider issue of use, which could lead to a commercial enterprise being required to totally change the name of a product.