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6 February 2018Trademarks

Conor McGregor in the ring over multiple TM oppositions

Mixed martial arts fighter Conor McGregor is currently embroiled in a series of trademark fights with brands from across Europe and the US, following his attempts to register several words and phrases associated with him at the European Union Intellectual Property Office (EUIPO).

The latest swing has come from make-up brand Mac, owned by Estée Lauder, which filed a trademark opposition to McGregor’s registration of the word mark ‘Mystic Mac’ on January 26 with the EUIPO.

McGregor applied to file ‘ Mystic Mac’, a nickname he has acquired, with the EUIPO in September 2017 for use in a number of international classes. The fighter’s application covered a range of products to be included in merchandising, such as clothing, cosmetics, accessories, printed matter, toys, and alcoholic beverages.

Mac’s opposition centres on a likelihood of customer confusion as well as unfair advantage. Mac owns a number of EU trademarks (EUTMs), filed between 1996 and 2013, for word and figurative marks for the word ‘Mac’, registered in international class 3 for cosmetics.

Earlier in January, Mac Mode, a German clothing manufacturer specialising in high-quality jeans, also filed a notice of opposition to the applied-for ‘Mystic Mac’ mark. Mac Mode owns EUTM number 012,451,951 for ‘Mac’, covering clothing (particularly denim attire), and complained that ‘Mystic Mac’, when applied to clothing, would confuse customers.

In August 2017 McGregor applied to register the mark ‘ChampChamp’ with the EUIPO. Two oppositions were filed in January, one by US company Cleats, which makes the Champ brand of sports footwear studs, and another by the Irish division of the global sportswear company Champion Products.

Both oppositions centre on the likelihood of confusion and unfair advantage, as Cleats and Champion each own previously registered EUTMs related to or including the phrase ‘Champ’ for clothing and related accessories.

McGregor filed to register mark ‘I Am Boxing’ in July 2017, which was opposed in November by Swiss retailer Migros-Genossenschafts-Bund. Migros sells ‘I Am’ branded clothing and cosmetics, and complained of a likelihood of confusion with its  previously registered marks.

In January 2017 the fighter filed ‘The Notorious’ as a word mark with the EUIPO, a move which was opposed by the owner of UK trademark number  2,519,784 for word mark ‘Notorious Fighter’. The mark is currently used on clothing, home textiles, and toys, it said, and would probably be confused with ‘The Notorious’.

Also in January 2017 the MMA competitor filed to register his name, ‘Conor McGregor’, which is being fought by Dutch fashion company Doniger. The company sells a brand of menswear called McGregor, unrelated to the fighter, and owns the word mark ‘ McGregor’ for clothing and accessories.

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