21 January 2022
Advised by a Taylor Wessing team led by Hamburg Partner Wiebke Baars, the Scotch Whisky Association (SWA) has won a legal dispute concerning the designation “Glen Buchenbach” used by the Swabian distillery Klotz, which has been ongoing since 2013. On 20 January, the Hanseatic Higher Regional Court in Hamburg rejected the German distillery’s appeal against a ruling from the lower court in 2019.
According to the ruling, Klotz violated the EU’s Spirit Drinks Regulation by using the name “Glen Buchenbach”. The SWA had filed a claim against such use, arguing that the component “Glen” was both misleading and evocative of Scotch Whisky. The Regional Court upheld the claim in 2019 when the SWA was also successfully advised by Taylor Wessing.
“The use of “Glen” is an unlawful evocation of the protected geographical indication “Scotch Whisky” in the name of the German whisky Glen Buchenbach. The word “Glen” means “small valley” in Gaelic and is of Gaelic/Scottish origin. Consumers might therefore mistakenly think of a Scottish Whisky, a “Scotch”, when they perceive the name “Glen” and not of a German whisky,” says experienced trademark lawyer Wiebke Baars, explaining the line of argument.
“Our research has shown that a large number of consumers in Europe think of Scotch Whisky when they think of Glen. Glen is used almost exclusively for “Scotch Whiskies”. It is mainly the well-known, higher-quality whiskies from Scotland that have this as part of their name. The EU Spirit Drinks Regulation prohibits evocations and misleading statements about the origin of a whisky. “Glen” may therefore not be used for a German whisky, as this makes consumers directly think of Scotch Whisky and creates the wrong impression about its origin,” commented Katharina Reuer, Salary Partner at Taylor Wessing, who also represented the SWA in the proceedings together with Wiebke Baars.
Wiebke Baars and Katharina Reuer emphasise that the SWA has consistently taken action in global markets to prevent the use of Scottish indications of origin on whisky which is not Scotch Whisky. This is vital to protecting Scotland's national drink and is a deterrent to those who seek to take advantage of the quality reputation of Scotch Whisky and potentially mislead consumers.
In the decision from the Hamburg Court, it was particularly highlighted that false or misleading information in the name of the product could not be compensated for or remedied by clarifying information on the packaging. “This would make it too easy to undermine the protection of geographical origin,” said Wiebke Baars. “The legislator has made its intention quite clear in this case.”