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All I want for Christmas is... your trade mark!

Pop icon Mariah Carey recently branched out into the drinks industry with the launch of her cream liqueur ‘Black Irish’.

Her plans to release the product into the European market hit a stumbling block when her legal team failed to secure the right to use the catchy name, which is protected by EU and UK trade marks held by Irish drinks company Darker Still Spirits Co Ltd, outwith the USA.  Darker Still launched their own Black Irish spirit (a blend of Irish Whiskey and Stout – which sounds like a lethal combination to the writer, though I may be considered a 'lightweight') back in July 2020.

Carey’s legal team have now launched a challenge to the validity of the trade marks held by Darker Still, alleging that the marks have not been put to genuine use within a continuous period of 5 years as is required by both European and UK law.  (This requirement prevents companies from ‘buying up’ brand names they have no intention of using).  Darker Still acquired the relevant trade marks in 2015 and have cited off-sales in 2019 as well as preparatory work back in 2018 as rebuttal evidence. 

The Irish company have also gone on the offensive, questioning whether Carey’s product can legally be referred to as an Irish cream.  Irish creams, along with other products whose name gives an indication of geographical origin (Scotch Whisky, Champagne), can benefit from a form of IP protection known as geographical indication right. This enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards.

Will Mariah add a new tipple to that omnipresent song as part of our annual festive traditions?  The IP team at Mills Selig will follow the unfolding legal battle with interest! 

Editorial prepared by: Kirsten Magee, Partner, Mills Selig

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