Under which circumstances does a whisky brand infringe the protected geographical indication “Scotch Whisky”?

On February 22^nd, 2018, Advocate General Saugmandsgaard Øe issued his opinion on the interpretation of Article 16(a) to ( c ) of the Spirit Drinks Regulation and if it applies to the contested name of a German whisky ‘Glen Buchenbach’.

The main proceedings

In the main proceedings, The Scotch Whisky Association (“TSWA”), the body that promotes the interests of the whisky industry in Scotland, sued a Swabian whisky distiller to stop him from using the brand name ‘Glen Buchenbach,’ a German whisky. The information on the label of the whisky bottle states, inter alia: ‘Waldhornbrennerei [Waldhorn distillery], Glen Buchenbach, Swabian Single Malt Whisky, Deutsches Erzeugnis [German product], Hergestellt in den Berglen [produced in the Berglen]’.

In respect of the use of the term ‘Glen’ for a German whisky TSWA claimed an infringement of the registered geographical indication (GI) ‘Scotch Whisky’ pursuant to Article 16(a) to ( c ) of Regulation (EC) No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (‘Spirit Drinks Regulation’).

Article 16 protects the GI ‘Scotch Whisky’ against practices liable to mislead the consumer as to the origin of such product. TSWA claimed, inter alia, that the designation ‘Glen’ evokes in the relevant public an association with Scotland and Scotch Whisky, notwithstanding the addition of other references to the German origin of the product. The defendant, Mr Klotz claimed that the designation ‘Glen Buchenbach’ is a play on words consisting of the name of the place of origin of the drink at issue (‘Berglen’) and the name of a local river (‘Buchenbach’).

The questions referred to the CJEU

The particular aspect about the present case is that the contested whisky name ‘Glen Buchenbach’ does not include the GI itself or parts of it, like in past cases decided by the CJEU applying Article 16 (see for example case C-75/15 comparing the designations “Calvados/Verlados”).

Therefore the Regional Court of Hamburg referred the case to the CJEU requesting a preliminary ruling concerning the interpretation of Article 16 and asked for the requirements in order to establish the existence (1.) of ‘an indirect commercial use’ of a GI, (2.) ‘an evocation’ of a GI and (3.) of a ‘false or misleading indication liable to convey a false impression as to the origin of the relevant product’.

With respect to the first and second question, the referring court especially wanted to know if such existence requires that the registered geographical indication be used in identical or phonetically and/or visually similar form, or if it is sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area. Furthermore, referring to all three questions, the court asked whether the context in which the disputed element is used plays a role when determining an unlawful use, or can that context not counteract any unlawful use, even if the disputed element is accompanied by an indication of the true origin of the product?

With respect to the factual circumstances of the case, the referring court briefly explained that the word ‘glen’ is a Gaelic word meaning ‘a narrow valley’ and that 31 out of 116 distilleries producing ‘Scotch Whisky’ — thus whisky of Scottish origin — are named after the glen in which they are located. The referring further court observed that there are also whiskies produced outside of Scotland which have ‘glen’ as part of their name.

The opinion of the Advocate General

With regard to the first question, the Advocate General stated that ‘an indirect use’ of a GI, prohibited by Article 16(a) requires that the disputed designation is identical or phonetically and or/ visually similar to the indication in question. He considered it not sufficient that the disputed designation is liable to evoke in the relevant public some kind of association with the registered geographical indication or the related geographical area.

In contrast, with respect to the second question, he firstly proposed that an ‘evocation’ of a GI pursuant to Article 16(b) does not require that there necessarily be a phonetic and visual similarity between the disputed designation and the indication in question. However, in the absence of such similarity, account shall be taken of the potential ‘conceptual proximity’ existing between the indication in question and the disputed designation, in so far as that proximity is of such a nature as to lead the consumer to have in mind, as reference image, the product whose indication is protected.

Secondly, the Advocate General stated that for the purposes of establishing the existence of such an evocation, it is not necessary to take account of additional information found alongside the contested designation, as for example in the description, presentation or the labelling of the product. He considered it settled case-law that it is irrelevant, under Article 16(b), that the disputed designation corresponds to the name of the undertaking and/or the place where the product is manufactured (river ‘Buchenbach’ or ‘Berglen’). The Advocate General pointed out that the CJEU has also stated that the fact that the disputed designation refers to a place of manufacture that is known to consumers in the Member State where the product is manufactured is not relevant for the application of Article 16(b), since that provision protects GIs against any evocation throughout the territory of the European Union and, in the light of the need to guarantee effective and uniform protection of those GIs in that territory, it covers all European consumers.

Consequently, the Advocate General proposed to answer the third question that in order to establish the existence of a “false or misleading indication” prohibited by Article 16( c ), it is not necessary to take account of additional information found alongside the sign.

Finally, the Advocate General pointed out that the question, if the image of ‘Scotch Whisky’ is triggered in the European consumer’s mind when he is confronted with a whisky product bearing the designation ‘Glen’, is solely for the Regional Court of Hamburg to decide.

In conclusion, it is positive for the protection of registered GIs that the Advocate General has interpreted widely the requirements for the assessment of an ‘evocation’ according to Article 16(b) and it remains to be seen how the CJEU decides on this matter.

Case Ref: C-44/17

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