Blarney Castle owner loses trade mark case

The owner of Blarney Castle has lost a legal challenge to a local distillery seeking to register the name ‘Blarney Emerald’ as an EU trade mark.

The European Union Intellectual Property Office (EUIPO) rejected an opposition filed by the owner of the famous tourist attraction, Charles Colthurst, against the application by Blarney Spirit Distillers to have ‘Blarney Emerald’ registered as a trade mark under goods classified as alcoholic beverages.

The EU agency, based in Alicante in Spain, which is responsible for managing registration of intellectual property, also awarded costs against Mr Colthurst.

Lawyers for Mr Colthurst claimed the company had a right to prohibit the use of the contested trade mark under the tort of “passing off”, as members of the public would believe the goods originated from the owner of Blarney Castle.

They argued that ‘Blarney Emerald’ was similar to earlier trade marks registered by their client for both ‘Blarney’ and ‘Blarney Castle’.

The EUIPO noted that those trade marks were registered in relation to a range of classes of products, including spring water, meat, shellfish, jams, cheese, non-alcoholic beverages, honey, and ice cream.

They also covered clothing, confectionery, giftware, candles, jewellery, stationery, leather goods, and kitchen utensils.

A three-person division of EUIPO said alcoholic drinks had nothing in common with any of the goods or services covered under the earlier trade marks.

The EUIPO said the contested goods were neither complementary nor in competition with any of the goods registered under the earlier trade marks and ruled they were “dissimilar”.

It pointed out that the similarity of goods was a condition for a finding of the likelihood of confusion among consumers.

The EUIPO noted that Blarney Spirit Distillers had availed of its right to seek Mr Colthurst to provide use of all the trade marks on which his opposition was based, over the previous five years.

They covered any use of goods, including spring water, vinegar, and alcoholic beverages.

The EUIPO noted that while Mr Colthurst provided information which showed Blarney Castle and Gardens had 470,000 annual visitors, none of the documents contained any information about the earlier trade marks and the relevant goods and services, “but referred exclusively to the castle itself as a monument or tourist attraction”.

They included press cuttings which covered the visit to Blarney Castle of celebrities including Sofia Vergara, Chris Tarrant, Ardal O’Hanlon, and Roy Keane, as well as TripAdvisor reviews and Instagram posts.

Information was provided after an official time limit, on sales of Blarney Castle Cider, which totalled over €37,300 in the period 2023-2025.

The EUIPO said it was clear from the evidence provided on behalf of Mr Colthurst that there was “no proof whatsoever” of use of the trade marks in relation to spring water or whiskey.

Evidence insufficient

It ruled that the evidence furnished by the owner of Blarney Castle was insufficient to prove that earlier trade marks were “genuinely used in the relevant territory during the relevant period of time for these goods and services”.

The EUIPO said no evidence, such as catalogues or pictures, was provided to show that vinegar was sold under either the ‘Blarney’ or ‘Blarney Castle’ marks.

Lawyers for Blarney Spirit Distillers noted that in related proceedings, Mr Colthurst had made much of the fact that he did not have a licence to sell alcohol in Ireland. 

They claimed the company inferred from this that the cider presented in evidence must therefore be presumed to be non-alcoholic cider.

However, lawyers for Mr Colthurst claimed there was an attempt to mischaracterise their evidence and confirmed that the cider in question contained alcohol.

They argued that the licence referred to in earlier proceedings related specifically to the sale of spirits.

They also claimed Mr Colthurst had demonstrated consistent and ongoing commercial sales of alcoholic cider containing the marks Blarney and Blarney Castle.

The EUIPO also ruled that the opponent had failed to demonstrate that earlier trade marks had required a reputation.

It said Mr Colthurst had failed to show that the earlier trade marks were known among the public and enjoyed public recognition beyond the repute of Blarney Castle itself.