In a recent case at the EUIPO’s Board of Appeals, singer Mariah Carey was refused trademark protection in the EU for the word mark (sign) “BLACK IRISH” for goods in classes 30, 32 and 33 (tea’s/ coffees/ hot chocolates/ beers/ liqueurs etc). It was rejected as per Article 7(1)(b), (c) and (j) EUTMR (descriptiveness, lack of distinctiveness, protected geographical indications (PGIs)).

The simplicity of “BLACK IRISH” was the deciding factor for the board since it makes perfect sense to the relevant audience in respect of the goods covered by the objection. As the sign is easily understood, the relevant English-speaking consumer public would commonly infer the meaning to Black Irish cocktails/ Irish Whisky/ Irish coffee etc. Because the sign would be interpreted by the relevant English-speaking consumer as black in colour/kind/form and originating in Ireland, (supported by English dictionary references for “BLACK” and “IRISH”) these two characteristics may influence the choice of consumers between various hot chocolates, teas, coffees, beers, and alcoholic beverages.

The board confirmed this violated both Art 7(1)(b) and (c) not only because a descriptive mark must be devoid of distinctiveness, but also because it fails to identify the commercial origin of the goods in question. Subsequently, as the sign also invoked several Protected Geographical indications (PGIs), namely Irish Whiskey/ Irish Whisky/ Irish cream/ Irish Poitin etc, the sign applied for was rejected under article 7(1)(j) EUTMR.

Ms Carey and her attorneys also insisted that “BLACK IRISH” was coined by herself in a nod to her African American and Irish heritage, although this information is irrelevant when the relevant public is faced with the sign in the context of the goods at issue.

Interestingly, the identical phrase “BLACK IRISH” EUTM No 13 873 096 was registered for identical goods in class 33 to those in the current case.  However, as is customary at the EUIPO, the Office’s this was not a sufficient justification to support Ms Carey’s registration. The board, therefore, recognised that the examiner correctly dismissed the trademark application for the goods in question per EUTMR Article 7(1)(b) and (c), both in conjunction with EUTMR Article 7(2).

Unfortunately for Ms Carey, it appears her ‘Fantasy’ to register the trademark sign “BLACK IRISH” will have to wait!

Authors: Ellie Jakubowski & Riccardo Ciullo

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