A recent decision of the General Court of the European Union has put an end to an ongoing trade mark dispute involving Mariah Carey. The decision in Lotion Llc v European Union Intellectual Property Office (T-498/21) appears to have put an end to the famous popstar's attempts to register a trade mark to help her launch her own liquor brand in the European Union.
In 2019 Carey registered the mark BLACK IRISH in the United States, as she attempts to launch her own Irish cream liquor brand of the same name. This registration was made in respect of Classes 09, 21, 25, 19, 30, 32 and 33. The final four listed classes primarily relate to beverage and drinks products. While the United States registration went through without any problems, Carey and her legal team have hit some significant obstacles in their attempts to protect the same BLACK IRISH mark in the European Union.
The most potent of these aforementioned obstacles is the judgment in Lotion Llc v European Union Intellectual Property Office, which deemed the mark BLACK IRISH to be descriptive and lacking distinctive character. The judgment concluded that the words ‘Black’ and ‘Irish’, used in an associative manner with the beverage and drinks related goods for which the marks were applied for, were inherently descriptive. Thus, the mark could not be registered.
The court stated that “the term 'black' refers to a characteristic which is objective and inherent to the nature of the goods at issue and intrinsic and permanent with regard to those goods”. The word ‘Black’ can be used to describe the colour of beverages, whereas the word ‘Irish’ denotes the location in which said beverages were produced. This was confirmed by the court went they went on to note that “the manner in which reference is made to the colour 'black', namely in combination with another descriptive adjective, makes it more likely that the relevant public will perceive that element as a descriptive indication of the colour of the relevant goods”. Consequently, the court concluded that mark also lacked distinctive character.
Another significant outstanding obstacle to marketing Carey’s liquor in the EU came from Irish company Darker Still Spirits Co., who acquired the rights to an earlier BLACK IRISH EU trade mark in 2020. They claim to have begun using this mark in 2020 in relation to the selling of a stout blended whiskey. This has led to a lengthy dispute, as Carey’s legal representatives attempted to reach an agreement with Darker Still Spirits for the use of their BLACK IRISH mark in the EU. When such an agreement failed to come to fruition, Carey’s team applied to revoke the Darker Still Spirits mark, claiming that Darker Still Spirits had not been continuously using the mark since its registration in 2015. The decision regarding this matter remains pending and will turn on whether the evidence of use of the mark by Darker Still Spirits is accepted as constituting genuine use.
It is questionable as to why Carey’s BLACK IRISH mark was deemed to not be registrable by the courts for its lack of distinctive character and its general descriptive nature, when the prior BLACK IRISH mark owned by Darker Still Spirits was registered by the EUIPO. However, as noted by the General Court in paragraph 73 of this case, they are not bound by the decisions of the initial trade mark examiner. Nonetheless, it would perhaps suggest that if the prior BLACK IRISH mark was also to be brought before the General Court of the EU, then it would also be considered to be incapable of registration.
This consideration is compounded by a quote from the owners of the prior BLACK IRISH trademark. As quoted in the New York Times, the owner commented on the name ‘Black Irish’ for their whiskey product, stating that “…we called it Irish because it is predominantly Irish whiskey. And we called it Black Irish because it is black. The liquid is black. And it is Irish”. Thus, the inherent descriptiveness of the mark is evident.
While the recent judgment of the General Court will not prevent Carey and her team from launching her liquor brand into the EU market, she will have considerably less protection for the brand in comparison to the United States, where the mark remains registered. Furthermore, depending on the outcome of the ongoing revocation proceedings with Darker Still Spirts, Carey may be outright blocked from entering her Black Irish liquor brand into the European market should it be determined that her brand is infringing upon the earlier mark.