Black Irish, the new Mariah Carey-branded cream liqueur, is fighting a trademark battle with a group of Irish entrepreneurs over plans to expand into the European Union.
The “All I want for Christmas is You” singer, whose grandparents on her mother’s side hail from Cork, announced her new alcoholic drink venture on Instagram on Monday, attracting global headlines.
However, filings in the European Union Intellectual Property Office (EUIPO) reveal the music star is embroiled in a year-long battle for the trademark Black Irish in the European Union, against a group of well-known Irish drinks entrepreneurs who already hold its trademark in the EU.
The filings, including extensive legal correspondence, reveal the efforts being made by Carey’s powerful legal team to oust the group of Irish entrepreneurs from using the trademark. The singer claimed the name this week in a social media post with the words: “Introducing Black Irish. Two years in the making. Truly a cause for celebration!!!”
The Irish drinks makers, through their company Darker Still Spirits Co Ltd, are already making an alcoholic drink called Black Irish in Europe, which blends Irish whiskey stored in charred oak barrels with stout, chocolate malt and roasted barley.
Their version of Black Irish is available nationwide in Ireland in some of the country’s biggest off-licences, including O’Brien’s Wine Beer & Spirits and Molloy’s Liquor Stores, after the business was created and launched by the four Irish drinks industry veterans.
They took over the trademark from a different company, which obtained it first in 2015, and they have launched the drink in Ireland. They have plans to take it to Europe too having created its distinctive taste and design reflecting its combinations of flavours.
The four founders of Black Irish are Dave Phelan, Adrian Walker, Steven Pattison and Richard Ryan. Phelan is a veteran in the Irish drinks industry. As a co-founder of Castle Brands, he created Boru Vodka, Ireland’s first premium vodka, and Clontarf, a range of Irish whiskies.
In 2006 he co-founded Scion Spirits which created Coole Swan, a high-quality Irish cream liqueur. He has also worked with Jose Cuervo and led Hinch Distillery. Walker previously helped Phelan create Coole Swan and is a renowned drinks mixologist.
Steven Pattison and Richard Ryan are managing directors of Drinksology in Belfast, the creative powerhouse who have helped create leading drinks brands like Drumshanbo Gunpowder Irish Gin, Bowsaw American Whiskey and Jawbox Gin. Drinksology has also worked on designing bars and experiences like The Dead Rabbit pub in New York and Roe & Co distillery in Dublin 8.
Snugs and mixed heritage
In an interview with World Beer & Spirits in July 2021, Phelan explained how the idea for Black Irish came together. “I got involved with a couple of guys from Drinksology in Belfast, who are great with brand development, plus Adrian Walker, formerly of Coole Swan, who is a genius with liquids,” Phelan said. “I had this image of a guy in a snug with a beer and a chaser and wanted to combine those two drinks.”
Carey, meanwhile, has written in her 2020 memoir of her sense of being both black and Irish as the daughter of Alfred Carey, a black Venezuelan, and her mother Patricia Hickey, who had Irish parents. She recalled how her mother was estranged from her parents, who eventually agreed to meet just her and her mother, but not her other siblings.
“I was a 12-year-old little girl and didn’t quite understand why she only invited me,” she recalled. “Looking back, I suspect it was because I was blond-ish and very fair for a mixed kid.”
The decision to use the phrase Black Irish is seen as reflecting her heritage, as well as the colouring and source of her drink, which is being made in Ireland.
Its launch follows shortly after the lifting of punitive US tariffs on imports of Irish cream liqueur in March. The tax of up to 25 per cent was introduced under former President Donald Trump during a trade row with the EU over aircraft subsidies, then suspended following the election of his successor Joe Biden.
Filings in the European Union Intellectual Property Office (EUIPO), however, reveal that the Irish co-founders of Black Irish had, according to their evidence, been working on their Black Irish project for years.
Darker Still Spirits Co Ltd was incorporated only in May 2020, but their legal filings and exhibits suggest that the project had been much longer in the works.
A representative of Carey is believed to have approached the Irish company early on to try and acquire the Black Irish trademark in the European Union, but it did not secure a deal.
Records in the EUIPO show that advisors to Carey are attempting to take the Black Irish trademark over in order to bring her cream liqueur – which says it is made in Ireland – to Europe.
A filing in the EUIPO from Splashes Beverages LLC, the company behind Carey’s version of Black Irish, asked law firm Finnegan Europe LLP to try to seize control of the trademark.
Finnegan Europe states that the Black Irish trademark was originally registered on July 8 2015, for the phrase Black Irish when used with “Whiskey [whisky]; Whisky; Alcoholic beverages (except beers).”
Ownership of this trademark was transferred to a Phelan company called Designar Ltd on 11 February 2020. Carey’s lawyers alleges that the trademark has “not been put to genuine use within a continuous period of five years” and should therefore be revoked.
The Irish drinks company has filed a response outlining how the trademark had been put to use during this time period and outlining why it believed that Carey’s allegations should be rejected.
“The plans to introduce the said brand and new type of whiskey date back to 2018 and the ‘Black Irish’ name for the same was agreed upon since as early as September 2019.”Mathys & Squire submission
In December 2020, its lawyers Mathys & Squire submitted a 133-page response outlining what it believes is extensive supporting evidence that demonstrates that Designar Ltd was actively using the trademark and that Carey’s legal argument as advanced by Splashes Beverages LLC is without merit.
The Mathys & Squire letter states that 27 exhibits including internal notes between Phelan, Walker and Pattison and Ryan demonstrate that “the plans to introduce the said brand and new type of whiskey date back to 2018 and the ‘Black Irish’ name for the same was agreed upon since as early as September 2019.”
“The evidence demonstrates the use of the mark made (in the relevant period) outside the organisations which were party to the project development,” it adds. It states that its exhibits show that its Black Irish was sold to consumers in Temple Bar in Dublin within the relevant period.
In addition, other supporting factors like the creation of social media accounts, correspondence with suppliers, press releases that were published in the media, all demonstrated that it was using the trademark actively.
Pattison has also filed a seven-page witness statement outlining the extensive work carried out between his company Drinksology with Phelan and Walker to create Black Irish.
Pattison’s statement says that the Black Irish trademark in Europe was acquired in January 2020, but that discussions around this brand were ongoing “since as early as 2018.”
An email between Pattison and his colleague Ryan, he said, showed notes briefing their designers on “the new Black Irish whiskey” on May 8, 2019. In June 2019 he provided further exhibits discussing the bottle design and liquid style of Black Irish.
After various interactions with Phelan, a decision was taken to launch the product under the Black Irish brand, which was codenamed Pot Black for confidentiality reasons.
On October 28 2019, a Drinksology designer called Una Martin finalised a draft design “clearly showing the Black Irish mark.”
On that same day, it asked Mathys & Squire to purchase the trademark Black Irish in Europe and the United States. In November 2019, a tasting session was held between the business partners of Black Irish, and notes from this meeting show them discussing launching Black Irish in May and June 2020.
An email from Pattison to Phelan on December 2, 2019, shows them agreeing Black Irish is the preferred name. Further documentation showed Mathys & Squire buying the Black Irish trademark in Europe, and by February 2020 the label designs for Black Irish were being prepared.
In March 2020, Black Irish set up a Twitter account, followed by Facebook in May 2020, and then Instagram in June 2020. Pattison also provides evidence showing them setting up a website called weareblackirish.com in June 2020, before switching to thisisblackirish.com in July 2020.
On June 10 and11 2020, Black Irish issued press releases to various trade publications, which covered their new product.
In May 2020, the product was tested in the Temple Bar, one of the best-known bars in Dublin, and on May 31, 2020, it said the owner of the Temple Bar acquired 120 bottles of Black Irish whiskey.
Mariah Carey is famous both for the range of her voice, her numerous hits and being a self-confessed diva. She has denied some of the wilder rumours of her demands, but acknowledged she was one to The Guardian last year, saying: “I am, bitches, that’s right!”
Having fought her way to the top, as told in her critically acclaimed memoir, Carey is used to getting what she wants, but in this case, it is far from clear whether she will get to sell her cream liqueur, Black Irish, in the European Union.
A spokesperson for Carey’s new drink Black Irish in the US said last night in response to questions: “We do not currently have details on the distribution of Black Irish internationally but will certainly be in touch with any updates specific to the EU… We can certainly look into the other details but may not have them by your deadline.” At the time of publication, she had been unable to respond further.
The spokesperson did not respond to a question to identify the manufacturer of the Carey-branded drink. It is sold as “Irish cream liqueur”, a protected geographical indication verified by the Department of Agriculture for seven producers only: Diageo, the maker of market leader Baileys; First Ireland Spirits in Co Laois; Merry’s in Co Tipperary; Niche Drinks Company in Derry; Orico/Silverpail Dairy in Co Cork; S&B Productions Ltd in Co Antrim; and Terra Spirits and Liqueurs in Co Cavan; as well as one bottling and labelling company, Donohoe Drinks in Waterford. A number of these businesses offer private-label contract manufacturing in addition to their own brands.
On Wednesday, August 25, Phelan released a statement on the behalf of the directors of the Darker Still Spirits Company, making it clear his business maintains it has “the legal ownership of the ‘Black Irish’ trademark in the EU & UK.”
“Following a successful acquisition of the brand name that was filed with the relevant IPO office in 2015 we launched the original Black Irish Whiskey brand in June 2020. It is a unique offering, named after, and created using, Ireland’s two most famous exports – black stout and Irish Whiskey.”
“Myself and my partners in Darker Still are collective veterans of the Irish drinks industry, and it is unprecedented that we are defending our position against a US company, within an Irish industry that we have helped support for over 30 years. We also call on Mariah Carey’s appointed agent to stop claiming trademark rights to other products owned by our directors, presumed as a tactic to undermine our wider businesses. Despite being subject to these distractions, it is business as usual and we are expanding the presence of our ‘original’ Black Irish Whiskey across all of Europe.”
“Similar rules apply to Irish cream as to Champagne or Cognac, and questions are now being prepared to Mariah’s brand team to ascertain how a ‘Geographic Indicator’ Irish Cream Liqueur, could have been produced on the island of Ireland without the relevant EU Trademark permissions. What is certain is that we will continue fighting any trademark objection whilst also engaging with the European Commission in regards to specific legalities surrounding Irish cream production. This will provide clarity on the matter and resolve an unfortunate situation, not of our making.”