CONOR McGREGOR - 258476

• Administrative Decision Number: 258476
• Date: 25 September 2023
• Section: Trade Marks Act, 1996 - 2018 - Current
• opponent: McGregor IP B.V

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 258476 and in the matter of an

Opposition thereto.

McGREGOR SPORTS AND ENTERTAINMENT LIMITED Applicant

(Represented by FRKelly)

McGregor IP B.V. Opponent

(Represented by Tomkins & Co)

The Application

1. On 7 July 2016 (the relevant date), McGREGOR SPORTS AND ENTERTAINMENT

LIMITED, of Charter House, 5 Pembroke Row, Dublin 2, (hereinafter “the Applicant”) made

application (No. 2016/01428) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to

register the trade mark “CONOR McGREGOR” in respect of the following goods and services

in Class 3: Aftershave; Toiletries; Shaving oils; Shaving gels; Shaving foam; Perfume;

Cosmetics. Class 9: Computer and video games; DVD's; Videos; Protective clothing; Compact

discs; Teaching apparatus and instruments. Class 16: Books; Printed publications; Calendars;

Diaries; Stationery. Class 25: Clothing; Footwear; Headgear. Class 28: Games and playthings;

Gymnastic and sporting articles. Class 41: Gymnasium services; Provision of health club

services; Health and fitness training; Education; Provision of training; Entertainment; Sporting

and cultural activities; Gymnastic instruction. Class 43 Restaurant and café services; Provision

of food and drink; Takeaway food services; Hotel services; Temporary accommodation and

Class 44 Barber shops; Hairdressing services; Healthcare services; Physiotherapy; Beauty

salons; Medical clinic services.

2. The application was accepted for registration and advertised accordingly under No. 258476 in

Journal No. 2356 dated 04/04/2018.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed

on 24 June 2018 on behalf of McGregor IP B.V., a Dutch Company of Schipholboulevard 373

NL-1118 BJ SCHIPHOL (hereinafter “the Opponent”) by their Agent Tomkins & Co. The

Applicant, represented by their Agent FRKelly, filed a counter-statement on 28 September

2018. The Opponent subsequently filed evidence under Rule 20 of the Trade Marks Rules, 1996

(“the Rules”). The Applicant, as is its right, elected not to file evidence under Rule 21.

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4. Both the Applicant and the Opponent elected to file written submissions in lieu of attending a

Hearing. The parties were notified that I had decided to dismiss the opposition and to allow the

mark to proceed to registration. I now state the grounds of my decision, and the materials used

in arriving thereat, in response to a request by the Opponent in that regard pursuant to Rule

27(2).

Grounds of the Opposition

5. In its Notice of Opposition of 27th June 2018, the Opponent states it has for many years carried

out business as a retailer of, inter alia, clothing, footwear, headgear and accessories, and related

goods and services. It then refers to its proprietorship of European Union Trade Marks -EUTM

002927549 “McGREGOR”, with a filing date of 8th November 2002, covering goods in Classes

3, 18 and 25. The Opponent further clarified that the Opposition was directed against the

Applicant’s Class 3 and Class 25 goods only.

6. The Notice of Opposition relates to the following sections of the Act:

- Section 10(2)(b) – identity or similarity of the goods and services and the identity or

similarity of the marks, leading to a likelihood of confusion on the part of the public,

including a likelihood of association with the Opponent’s trade mark

- Section 10(3) – use of mark would take unfair advantage of, or be detrimental to, distinctive

character or reputation of the Opponent’s trade marks; and

- Section 10(4)(a) – use of the mark in the State is liable to be prevented by virtue of the law

of passing off.

- Section 8(4)(a) – its use is prohibited in the State by any enactment or rule of law or by any

provision of Community law;

- Section 37(2) – The application shall state that the trade mark is being used, by or with the

consent of the applicant, in relation to the goods or services specified in the application, or

that the applicant has a bona fide intention that it should be so used.

- Section 42(3) – If the applicant fails to satisfy the Controller that the requirements for

registration have been met, or to amend the application so as to meet them or fails to

respond before the end of the specified period, the Controller shall refuse to accept the

application.