CJEU asks whether 'Glen' triggers an image of 'Scotch Whisky' in geographical indications case

The Court of Justice of the European Union (CJEU) has ruled on the interpretation of Article 16(a) to (c) of Regulation (EC) No 110/2008 on the protection of geographical indications of spirit drinks.

Background

A geographical indication is a distinctive sign used to identify a product as originating in the territory of a particular country, region or locality where its quality, reputation or other characteristic is linked to its geographical origin, such as Cognac or Champagne. The Regulation is designed to protect both producers and consumers against potential misuse.

The CJEU reference came from the Hamburg Regional Court in proceedings concerning indication 'Scotch Whisky' which is registered in Annex III of the Regulation in relation to 'whisky/whiskey' products with the 'United Kingdom (Scotland)' listed as the country of origin.

The defendant, Mr Klotz, was an online distributor of whisky. He marketed a whisky which was produced in Germany under the designation 'Glen Buchenbach'. The Scotch Whisky Association (SWA) sought an order that Mr Klotz cease to market the whisky under the designation 'Glen Buchenbach' on the ground that its use infringed Article 16(a) to (c) of the Regulation.

The SWA argued that Article 16(a) to (c) ensures that geographical indications are protected not only against the use of such indications but also against references that suggest the geographical origin of the indication. It argued that because 'Glen' is widely used in Scotland instead of the word 'valley' and, in particular, as an element of the trade mark in the names of many Scottish whiskies, it evoked in the relevant public an association with Scotland and Scotch Whisky despite the inclusion of other information on the label which specified that the product was of German origin.

Decision

The CJEU ruled that Article 16(a) of the Regulation meant that, for the purpose of establishing that there is "indirect commercial use" of a geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. It is not sufficient that the disputed element is liable to evoke some kind of association with the indication or the geographical area it relates to.

It is not all bad news for the SWA. In relation to Article 16(b) of the Regulation, the CJEU ruled that:

• For the purpose of establishing that there is an 'evocation' of a geographical indication, the referring court is required to determine whether, when the average European consumer is confronted with the disputed element (ie "Glen"), the image triggered directly in his mind is that of the product whose geographical indication is protected (ie Scotch Whisky).

• In the absence of (i) any phonetic and/or visual similarity between the disputed element and the indication and (ii) any partial incorporation of the indication, the referring court must take account of the conceptual proximity between the indication and the disputed element.

• The referring court must not take into account either the context surrounding the disputed element, or, in particular, the fact that the disputed element is accompanied by an indication of the true origin of the product.

  Finally, the CJEU ruled that Article 16(c) meant that, for the purpose of establishing that there is a 'false or misleading indication', account must not be taken of the context in which the disputed element is used. The CJEU noted that if a false or misleading indication could be permitted because it is accompanied by additional information relating, in particular, to the true origin of the product, the provision would be deprived of practical effect.

  The case will now be referred back to the Hamburg Regional Court for a decision on the facts.

Comment

This ruling provides helpful clarification on the scope of the geographical indication protections under the Regulation. In particular, it confirms that you do not necessarily need to use the actual geographical indication on your product to contravene the Regulation and that the inclusion of information on the product label which specifies the true origin of the product will not be a defence against misuse of geographical indications.  

This is good news for manufacturers of Scotch Whisky (and indeed manufacturers of other products protected by geographical indications, such as Irish Whiskey, Cognac and Champagne) who need to protect their collective goodwill in the indication from mischievous market entrants. 

Case: Scotch Whisky Association v Klotz (Case C-44/17) (7 June 2018)