13 August 2018Trademarks

Adidas unit loses TM duel over Conor McGregor name

The District Court of The Hague has ordered Reebok to stop selling clothing bearing the name of professional mixed martial arts (MMA) star Conor McGregor.

The district court gave its judgment on Friday, August 10.

According to Netherlands-based fashion brand McGregor IP, Reebok, which is an Adidas subsidiary, has sold hoodies, shorts and shirts that infringe its trademarks.

The clothes feature the name ‘Conor’ in small print, followed by the name ‘McGregor’ in much larger print.

McGregor IP alleged that the signs used by Reebok are identical to the company’s earlier marks because “the addition ‘Conor’ is insignificant in view of the layout of the text on the clothing”. The fashion brand said that this could lead to a likelihood of confusion.

McGregor IP owns the word mark for ‘McGregor’ in the Benelux trading bloc and the EU under registration numbers 0,034,089 and 002,927,549 respectively. The marks are both registered under class 25 for goods related to clothing.

The judge said that the name ‘Conor’ on the clothing is only small and, as a result, the public will not immediately connect it with the MMA fighter. Although Reebok argued that the name ‘Conor’ is legible when examined closer, the judge supported McGregor IP’s argument that clothing is not always closely studied by the public.

According to Reebok, the name ‘Conor McGregor’ should be given the same reputation as the names of well-known football players. However, the court dismissed this argument on the basis that MMA is not as popular as football within Europe.

In addition, the court said that Reebok was incorrect to say that the MMA fighter is so well-known that the general public would immediately think of him when they saw the word ‘McGregor’. Rather, the court said that the use of the name ‘McGregor’ on the Reebok garments could create an impression of a commercial connection between the goods and McGregor IP.

“The public may have the impression that McGregor IP is now (also) focusing on this market for sportswear,” said the court.

“This has made it sufficiently plausible for the time being that there is a confusing similarity between the McGregor trademarks and the Conor McGregor sign as is currently used on the hoodie, the shorts and the jersey.”

While the court said that the Reebok clothing infringed McGregor IP’s trademarks, this only extended to the way in which the names ‘Conor’ and ‘McGregor’ were displayed.

Reebok was ordered to pay McGregor IP €15,700 ($17,900).

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