A fashion label in the Netherlands, McGregor IP BV (MIB), has won its recent trade mark battle against Adidas and the famous MMA fighter Conor McGregor (McGregor).The District Court ruled that their recently launched collaboration clothing line was an infringement – due to the presence of McGregor’s name. Adidas is therefore no longer allowed to sell the clothing with McGregor’s name on it, as it was used at the time of the ruling, in Europe or else they could be fined up to €250,000.
Following McGregor’s signing to the UFC, Adidas’ subsidiary company Reebok launched a range of high-end sportswear called the ”Conor McGregor Collection”. The collaboration includes hoodies, shorts and other clothing items with the famous Irishman’s name emblazoned across them. . Thereafter, McGregor’s company, McGregor Sports Entertainment Limited, made an application to the European Union Intellectual Property Office to register his name, “Conor McGregor” as a trade mark, in relation to clothing. However, it did so without checking first to see if anything similar was in existence. As it transpired, there was – McGregor IP BV’s clothing line. MIB’s line is well-established throughout the Netherlands and has been known for selling trendy, high-end menswear clothing since 1921.
MIB naturally objected to McGregor’s application, particularly when it had sight of the actual designs of the sportswear launched by Reebok. Therein, McGregor’s surname was present on the garments in very large letters, whereas his forename was considerably smaller. MIB contacted Reebok and requested that they cease selling the range because it could lead to confusion by the general public, that the MIB clothing line and the Reebok range were associated. The sportswear giant refused, and MIB consequently sought an injunction to prevent Adidas from selling the “Conor McGregor” emblazoned range.
The argument put forth by MIB’s lawyers was simple: the presence of McGregor’s surname was so prominent on the clothing that it was sufficient to generate confusion in the eyes of the general public – therefore it infringed upon the trade mark they hold of the “McGregor” name. Adidas’ lawyers took a different route when putting their arguments to the judge, comparing McGregor to other sporting icons such as Ronaldo, and argued that his mass appeal was so distinctive that there could be no possibility of confusion.
The court found in favour of MIB, disagreeing with Adidas’ assertion that the general public in Europe would think “McGregor” is synonymous with McGregor’s name. They said it was incorrect to compare McGregor to personalities such as Ronaldo on the basis that MMA as a sport is not as popular as football throughout Europe. Moreover, the MIB’s brand was deemed to be sufficiently established throughout Europe and therefore there would be sufficient confusion between the Reebok range and the MIB brand, due to the current dominant positioning of the “McGregor” name across the Reebok clothing. The court ordered Adidas to cease selling the range in Europe within seven days of the judgement and to pay €15,700 of MIB’s legal fees.
The judgment in this case only applies to how the words were used on the garments, at the time of the ruling, therefore McGregor may recover from this knockout. Nevertheless, the principle in this case is simple: when applying for a trade mark, regardless of how distinctive you think your prospective mark is, you should always conduct the relevant searches to see if anything similar exists, which could cause any issues later down the line. Had this been done in this case, Adidas and McGregor may not have suffered such a costly defeat.
This blog post was co-written by Cara McGlynn, Litigation Solicitor, and Suzi Smith,Trainee on Brodies’ Commercial Property team.
On August 21, 2018