Notorious Trademarks

I was quoted in an article by Mark Paul in the Irish Times today in relation to the trademark fight Conor McGregor is having with two Liverpool based business men over the name  – Read the article here 

Notorious EU Trademark Row

Of it’s nature, of course, any quote in an article like that is limited, so here’s the full ‘bit’ on this trademark fight that I sent on to Mark:

From: Brian Conroy
Sent: Thursday, August 31, 2017 5:11 PM
To: Mark Paul
Subject: RE: The Notorious Trademark Battle

If you’re looking to sexy it up a bit, McGregor could also land himself in a spat with

  1. Ralph Lauren – They have an EU Trademark for ‘Notorious’ for perfumes and the like which he is looking for in Class 3 – I’m amazed they haven’t opposed him also
  2. Puff Daddy (Or P Diddy, Or Sean Combs or whatever the hell he’s called now) – His company Bad Boy Media LLC also has a trademark for ‘Notorious’ (as in the Notorious BIG) for Classes 9, 16, 41 and 42

If you need anything else give me a shout, otherwise look forward to reading the piece.

Cheers

Brian

 

From: Brian Conroy
Sent: 31 August 2017 17:01
To: Mark Paul
Subject: The Notorious Trademark Battle

 

Hey Mark

I think your original question was “is this a problem for McGregor?”

The short answer is yes….but man is it more complicated than that. I’ll set it all out as basic as I can and you can cherry pick any bits or quotes that you like. If you could credit Brian Conroy, Trade Mark Solicitor and possibly plug my website www.thetrademarkninja.com that would be great.

The biggest problem here, and the biggest difference between this and some of his other trademark issues, is that this is an existing trademark. Generally (and subject to a load of exceptions which would bore your readers to tears), trademarks work on a first past the post system, so the first person to apply, gets the trademark.  Once you have a trademark, you have a stronger hand than someone who doesn’t. Think of it like Top Trumps. Worse, the people who own this UK one appear to have lots of money, and have hired good legal representatives to fight against McGregor getting the trademark. That’s also new for him.

The trademark that is being relied on is from 2009, so there can be no suggestion that there was any bad faith behind the registration. In other cases, people are now trying to trademark ‘Notorious’ and other phrases connected with McGregor specifically to try and cash in and get a pay day, that’s not the case here. That helps the owners.

However, the UK trademark being relied upon can only really prevent McGregor using the brand in the UK. So, even if the EU trademark is refused because of the UK trademark, it can be converted into national applications for all the EU member countries EXCEPT the UK. Meaning in the worst case scenario he could market his ‘The Notorious’ line everywhere in Europe except the UK. That happens sometimes, and is why, for example, Bulmers is called Bulmers here, but Magners over in the UK. In short, there was already a Bulmers in the UK. Ditto here, there’s already a “Notorious Fightwear” in the UK.

Trademarks can be opposed in the EU if you have an existing trademark anywhere in the EU that is identical or similar to the trademark that is being applied for, and it’s for identical or similar goods, which is likely to lead to confusion among the buying public.

Here, ‘Notorious Fightwear’ is definitely somewhat similar to ‘The Notorious’

As for the goods and services, trademarks are applied for in a number of ‘Classes’ – There are 45 in total

 

Existing Trademark – Goods Classes of Trademark McGregor’s Application – Goods/Services
NONE 3 Aftershave; Toiletries; Shaving oils; Shaving gels; Shaving foam; Perfume; Cosmetics.

 

NONE 9 Computer and video games; DVD’s; Videos; Protective clothing; Compact discs; Teaching apparatus and instruments.

 

NONE 16 Books; Printed publications; Calendars; Diaries; Stationery. 
Textiles and textile goods; bed and table covers; travellers’ rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets. 24 NONE
Clothing, footwear, headgear. 25 Clothing; Footwear; Headgear.

 

Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens’ toy bicycles. 28 Games and playthings; Gymnastic and sporting articles.
NONE 41 Gymnasium services; Health club [fitness] services; Health club services [health and fitness training]; Education; Provision of training; Entertainment; Sporting and cultural activities; Gymnastic instruction.

 

NONE 43 Restaurant and café services; Provision of food and drink; Takeaway services; Hotel services; Temporary accommodation. 
NONE 44 Barber shops; Hairdressing services; Healthcare services; Physiotherapy; Beauty salons; Medical clinic services.

So, the real fighting here is over Clothes and Sporting Gear, which are the two classes (Classes 25 & 28) where the existing trademark already has protection and where McGregor wants it

Actually, the range of goods that are sold under the Notorious Fightwear brand are really limited, just four products:

https://www.mmafightwear.net/brand/notorious-fightwear

That company (MMA Fightwear) is part of the DPT group (which is the group owned by the trademark owners, largely focussing on pool tables and equipment as far as I can tell)

However, all that’s required is Genuine use in the Course of Trade

If McGregor fights it, it will probably be on this. They will look for evidence of the use of the trademark for all the goods it’s registered for. So, for example, if the trademark owner hasn’t sold any bed or table covers (which they don’t appear to have) under the ‘Notorious Fightwear’ brand in the last 5 years, the trademark will be revoked for those good/services.

It APPEARS (from what I can see) as though Notorious Fightwear has only been used for clothing with shorts and a few tops. In Intellectual Property law, attack is usually the best form of defence, and it’s said that it’s better to have a weak trademark in strong hands than a strong trademark in weak hands. If I was McGregor, I would be looking for evidence of genuine use in respect of all the products ‘Notorious Fightwear’ has been used for for the last 5 years, and hoping practically nobody has bought anything. If, for example, they have sold none, or practically none of the Notorious Fightwear products, then you could try and revoke their registration for failing to show genuine use in a substantial part of the UK or EU

Another possibility is to argue that there’s no likelihood of confusion despite the similarity, because McGregor is so well known now. This is how, for example the German Supermarket chains have so many look-a-like products and aren’t sued from here until the end of time. They have successfully argued that there’s no likelihood of confusion, because if you’re shopping in their shop you know you are getting the knock off versions, so you’re not confused that you’re getting the real thing, so there’s no infringement.  I guess McGregor could have an angle there, but it’s a bit of a longshot.

He could also apply to trademark his Notorious logo, which would be more distinctive and less likely to be confused.

One final caveat, which is that FR Kelly are the best in the business (except for me, obvs) so he’s got the best in his corner so to speak.

If I had to guess, I’d say he’ll fight it all the way, then if he loses, buy them out.

Sooooo, is it a problem? Yes.

Is it a big problem if you’ve just made €70 million in 30 minutes. No.

Hope that helps

Brian