Conor McGregor limbers up for European trademark fight over ‘The Notorious’

Rows threatens his ability to market products using certain brands linked to his name

He’s got bottle: after the Floyd Mayweather bout, Conor McGregor said he planned to sell an Irish whiskey called Notorious. Photograph:  Ethan Miller/Getty Images

He’s got bottle: after the Floyd Mayweather bout, Conor McGregor said he planned to sell an Irish whiskey called Notorious. Photograph: Ethan Miller/Getty Images

 

Fresh from earning $100 million for fighting Floyd Mayweather, Dublin sportsman Conor McGregor is now limbering up for a series of trademark battles to secure his intellectual property rights and to cash in on his name.

Mr McGregor, who is set to become the second-highest earning global sports star of 2017, is being challenged in a string of disputes by companies from the UK to the Netherlands.

The rows could threaten his ability to market products across Europe under certain brands associated with his name.

The Crumlin native has engaged top Dublin trademark attorneys FR Kelly to tie down his intellectual property rights. They have filed trademark applications for various phrases associated with him in Dublin and also with the European Union Intellectual Property Office (EUIPO) in Spain.

Mr McGregor’s Irish holding company in January filed a EUIPO application for “The Notorious”, his fighting nickname. In May, two Liverpool businessmen, brothers Andy and John Underwood, sought to block him.

The Underwood family has for 40 years operated a large manufacturer of pool tables, the DPT Group. In 2009, long before McGregor was a big name in mixed martial arts (MMA), they also registered Notorious Fightwear in the UK.

The Underwoods are using this UK mark to try to stop the Irishman from using The Notorious in the EU, across product classes from sports gear to toiletries.

DPT also owns a website, mmafightwear.net, which Andy Underwood registered in 2007. It sells combat sportswear under the “Notorious” brand. The brothers have hired a UK law firm for the row. Andy Underwood declined to comment to The Irish Times on the row.

Register nickname

Brian Conroy, a top Irish trademark solicitor who operates as thetrademarkninja.com, says the row is a problem for Mr McGregor because the Underwoods registered Notorious Fightwear long before the Irish fighter tried to register his nickname.

“Generally, trademarks work on a first-past-the-post system, so the first person to apply, gets the trademark,” he said. “Once you have a trademark, you have a stronger hand than someone who doesn’t.”

He said if Mr McGregor’s EUIPO application fails, he may still be able to convert Notorious into trademarks for each EU country except the UK, although it is also unclear how Brexit could affect UK-EU intellectual property law.

Mr McGregor this year also sought a EUIPO trademark for “Conor McGregor”. This is being opposed by a Dutch clothing company, Doniger Fashion.

Doniger used to be called McGregor Fashion, and over a decade ago it registered the McGregor name for clothing.

Already owned

After the Mayweather bout, Mr McGregor announced plans to sell an Irish whiskey called Notorious. However, the EUIPO mark for “Notorious” for alcohol is already owned by Séamus O’Hara, of the Carlow Brewing Company.

In July, EUIPO notified Mr O’Hara that Mr McGregor was seeking to trademark Notorious for alcoholic drinks.

So far, Mr O’Hara has not sought to block him.

Mr McGregor has also sought trademarks for other phrases, including “49-1”, presumably a reference to Mr Mayweather’s boxing record if he beat him; “I Am Boxing”, another catchphrase for that fight; “Mactalk”, and “ChampChamp”, a reference to his two Ultimate Fighting Championship world titles.

A spokeswoman for Mr McGregor did not respond to queries. Since last year, he has also fought a separate trademark battle against a Manchester businesswoman over the phrase “Conor McGregor The Notorious”. That is ongoing.