German Glen whisky dispute: latest decision in favour of the Scotch Whisky Association

As we previously reported, in its Glen Buchenbach judgement of 7 June 2018, the CJEU (case C–44/17) gave guidance on the interpretation of Art. 16 a) to c) of the Spirit Drinks Regulation (EC) No. 110/2008, strengthening the protection of geographical indications in the EU.

Based on this preliminary ruling, in February 2019, the Regional Court of Hamburg prohibited the use of the designation GLEN BUCHENBACH for a German whisky as misleading, in the sense of Art. 16 c) of the Spirit Drinks Regulation. It did not consider the use to be an unlawful evocation according to Art. 16 b).

In another very similar proceeding, the Higher Regional Court of Hamburg had to deal with the designation THE GLEN ELS for a German whisky from the German Harz region.

In its appeal decision of 19 September 2019 (case 3 U 262/16), the Higher Regional Court ruled that the defendant has to refrain from "labelling, distributing and/or marketing whisky that is not Scotch Whisky in the Federal Republic of Germany in commercial transactions under the designation 'Glen Els' and/or 'The Glen Els'."

The Court, in accordance with the findings of the CJEU concerning the application of Article 16 (c) of the Spirit Drinks Regulation, considered the use of the contested indication 'Glen' for a German whisky GLEN ELS to be misleading.

The Higher Regional Court ruled in addition the use of 'Glen' in the name of a German whisky, despite the reference to its German origin, is an unlawful evocation to the protected geographical indication Scotch whisky according to Art. 16 b) of the Spirit Drinks Regulation.

The Higher Regional Court applied the CJEU's guidance that it had to be considered whether an average European consumer thinks directly of the protected geographical indication – 'Scotch Whisky' – when he is confronted with a comparable product bearing the disputed designation – in this case 'Glen':

• in the absence of any phonetic and/or visual similarity between the disputed designation and the protected geographical indication
• any partial incorporation of that indication in that designation, and
• the conceptual proximity between the protected geographical indication and the disputed designation.

Evocation is broadly interpreted in CJEU case law. Unlike the use of a geographical indication in accordance with Art. 16 a) of the Spirit Drinks Regulation, 'evocation' does not require that the protected designation itself be used. It can also occur through figurative signs.

The decisive criterion is whether the image triggered directly in the consumer's mind is that of the product whose geographical indication is protected.

The claimant, Scotch Whisky Association, had provided compelling evidence showing that in the EU the only 'Glen' whiskies on offer with a significant market share are Scotch whiskies. Furthermore market surveys supported the claim that the relevant public believes 'Glen' to be a component of Scotch whiskies. The fact that 'Glen' is not a synonym for 'Scotch Whisky' is irrelevant. Similarity of terms is unnecessary for conceptual proximity.

Consequently, the Higher Regional Court, found that from the point of view of the average European consumer, the indications 'Glen' or 'Glen Els' or 'The Glen Els' bring about a direct association with goods that bear the protected geographical indication 'Scotch Whisky', if this indication – and this is the subject matter of this dispute – is attached to the whisky.

The product description with the indication 'Glen' triggers in the mind of a significant portion of the relevant public the image of Scotch whisky that is more than a mere association. The deception cannot be removed by an explanation, especially not through an 'explanation' with the indication 'Els' as in the case at hand.

In its reasoning, the Higher Regional Court thus goes beyond the decision of the Regional Court of Hamburg in the GLEN BUCHENBACH case.

It protects Scotch whisky under Art. 16 b) of the Spirit Drinking Regulation much further than the Regional Court. An appeal to the German Federal Supreme Court was not permitted.