Under what circumstances will a whisky brand infringe the protected geographical indication "Scotch Whisky"?

We already reported on the opinion of Advocate General Saugmandsgaard Øe on this question of February 22, 2018 (case C-44/17). In the judgment of June 7 2018 the CJEU finally answered the question and gave long desired further guidance on the interpretation of Article 16(a) to (c) of the Spirit Drinks Regulation with the result that the protection given to geographical indications has been strengthened.

The main proceedings

In the main proceedings, the Scotch Whisky Association, The Registered Office ("TSWA") 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' for 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]'.

The TSWA regarded the use of the term 'Glen' for a German whisky as 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'), because 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 questions referred to the CJEU

The special aspect about the present case is that the contested whisky name 'Glen Buchenbach' does not include the GI itself or parts of it, compared to other 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 for a preliminary ruling concerning the interpretation of Article 16 and asked for the requirements in order to establish the existence:

• of an 'indirect commercial use' of a GI;
• an 'evocation' of a GI; and
• 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?

The first question

With regard to the first question, the CJEU followed the opinion of the Advocate General and held that, for the purpose of establishing that there is 'indirect commercial use' of a GI, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. The CJEU considered it not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the related geographical area.

The second question

With respect to the second question, the CJEU firstly clarified that in assessing whether there is an 'evocation' within the meaning of Article 16(b), it is for the national court to determine whether, when the average European consumer is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose GI is protected.

In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication. The CJEU made a clear distinction between the prohibited conducts of Article 16(a) and (b) pointing out that it is possible that an 'evocation' may be found to exist even in the absence of the similarity that is required in order to establish 'indirect commercial use' of a GI.

Secondly, the CJEU clarified that for the purpose of such assessment, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.

The third question

In the context of the third question, the CJEU, for the first time, fortunately gives guidance on the interpretation of the terms 'false or misleading indication' prohibited by Article 16(c) as well as on the relation of the different prohibited conducts of Article 16(a)-(c) to each other.

The Court defines that Article 16 contains a graduated list of prohibited conduct in which point (c) of Article 16 must be distinguished from points (a) and (b). Article 16(a) is limited to use of the protected geographical indication and (b) to misuse, imitation or evocation. Article 16(c), however, widens the scope of the protection to include 'any other … indication' which, while not actually evoking the protected geographical indication, is 'false or misleading' as regards the links between the product concerned and that indication.

This means that:

• the term 'any other … indication' includes information that may be found in any form whatsoever on the description, presentation or labelling of the product concerned, including in the form of words, an image or a container capable of providing information on the provenance, origin, nature or essential qualities of that product;
• in order to establish that this information is 'liable to convey a false impression as to [the product's] origin', it is sufficient that a false or misleading indication be included either on the description, presentation or labelling of the product concerned; and that;
• account is not be taken of the context in which the disputed element is used.

Similar to its interpretation of Article 16(b), the Court also pointed out the extensive protection to GIs afforded by Article 16(c) and held that provision would be deprived of practical effect, if a false or misleading indication could nonetheless be permitted because it is accompanied by additional information relating, in particular, to the true origin of the product concerned.

In conclusion, it is especially positive for the protection of GIs that the CJEU has interpreted widely the requirements for the application of the prohibition conduct within the meaning of both provisions, Article 16(b) - 'evocation' – and 16(c) - 'false or misleading indication' - and thereby granted GIs a broad scope of protection. In this case, in order to assess whether there is an 'evocation' prohibited by EU law, the Hamburg Regional Court will now have to determine whether a consumer thinks directly of the protected GI 'Scotch Whisky' when he sees a comparable product bearing the designation 'Glen'.

Case Ref: C-44/17