The trademark dispute between Mariah Carey’s company, Splashes Beverage, and Darker Still Spirit Company, an Irish whiskey-based liqueur company, has finally come to an end. After a lengthy battle, it has been announced that Darker Still Spirit Company has agreed to sell its UK and EU ‘Black Irish’ trademarks to Splashes Beverage, and to rebrand its products to ‘Irish Born’.
The dispute started in 2021 when Splashes Beverage launched ‘Black Irish’, a cream liqueur in the US. Plans of expanding into the UK and the EU were made difficult, as ‘Black Irish’ had already been trademarked in 2015 by Darker Still Spirit, in the UK and EU in class 33 (the trademark class for alcoholic beverages). Despite this, ‘Black Irish’ was launched by Darker Still Spirits in June 2020. It seems likely that Carey’s legal team made attempts to challenge the existing UK and EU trademarks, on the basis that Darker Still Spirits had not made genuine use of the trademarks for a continuous period of five years since making the applications.
Splashes Beverage had also sought to register ‘Black Irish’ in the UK and EU, both of which were met with a challenge. I’d imagine that Darker Still Spirits presented opposition on the basis that there would be a clear likelihood of confusion between the two trademarks and the identical nature of the goods they cover. Had the applications been permitted, in my view the argument would have been that this would dilute Darker Still Spirit’s intellectual property rights and undermine the goodwill it had generated on the back of its branding.
Darker Still Spirit has held its trademarks since 2015, which it claims it had been put to genuine use in commerce, in my opinion its position in the UK and the EU was solid. It had strong grounds to fully oppose any attempt by Splashes Beverage to trademark in the UK and the EU, and to pursue it for trademark infringement if Splashes Beverage used ‘Black Irish’ in commerce in the UK or EU. Despite this, Darker Still Spirits conceded and agreed to sell its trademarks to Splashes Beverage and announced that its liqueur would be renamed ‘Born Irish’.
Darker Still Spirits may have felt compelled to agree to the sale and receive compensation, rather than to continue with a protracted and costly legal battle. That payment clearly must have been enough to enable Darker Still Spirits to recover the costs spent defending its trademarks, as well as the costs of rebranding and registering its new trademarks.
It is highly possible that Carey’s decision to name the product ‘Black Irish’, despite the existence of Darker Still Spirits’ brand, may have been a calculated risk. She and her company would either need total confidence in their ability to win the ensuing legal battle, or be willing to accept the potential loss and the need for a rebrand.
The dispute between Darker Still Spirits and Splashes Beverage raises several interesting points. Firstly, it underscores the importance of conducting a thorough search for existing trademarks before investing resources in creating and marketing a new product. Failure to do so can result in costly legal battles, as demonstrated by this case.
Secondly, the case highlights the significance of trademarks in the alcoholic beverage industry. For a company like Darker Still Spirits, a trademark is an essential component of its brand identity, representing the quality and reputation of its products. Therefore, it is understandable that the company would go to great lengths to protect its intellectual property, and prevent others from using a similar trademark that could confuse consumers and dilute its brand.
Thirdly, the case illustrates the potential power imbalance that may arise between smaller businesses and larger corporations, and the need for legal frameworks to protect the intellectual property rights of those businesses. One only needs to think about the trademark dispute between the Darlington-based clothes boutique, House of Zana, and fashion giant, Zara, for this point to be reinforced.
It is worth noting that while trademark disputes can be contentious, they can also be an opportunity for companies to generate publicity and increase brand awareness. The dispute between Darker Still Spirits and Splashes Beverage has certainly attracted attention and may have helped to boost the profiles of both companies.
Written by Laura Unite, Solicitor at Jamieson Law.