Following our blog earlier this year on the CJEU's ruling about the "Champagne" protected designation of origin (see here), we now take a look at its latest decision concerning alcohol – this time the "Scotch Whisky" geographical indication.
A German distiller, Waldhorn distillery, decided to name its whisky 'Glen Buchenbach' which was derived from 'Berglen', the name of its hometown, and from the river Buchenbach which runs through its valley. It's label also includes detailed information about the local origin such as 'Waldhornbrennerei' (Waldhorn Distillery), 'Swabian Single Malt Whisky', 'Deutsches Erzeugnis' (German product) and 'hergestellt in Berglen' (produced in Berglen). However, this was not enough for the Scotch Whisky Association ("SWA") which filed an action for infringement of the registered geographical indication (GI) "Scotch Whisky" before the District Court of Hamburg.
The SWA argued that the Gaelic term 'glen' constitutes an unlawful indirect use and evocation of "Scotch Whisky" as it is used in a number of whiskies of Scottish origin such as Glenlivet, Glenfidditch, Glengoyne and Glen Moray.
The District Court of Hamburg referred the following questions to the CJEU in relation to Article 16 of Regulation on the protection of GIs of spirit drinks (110/2008/EC) ("Regulation"):
- Does the indirect use or evocation of a registered GI require that it be used in an identical or phonetically/similar form? Or is it sufficient that the term evokes some kind of association with the GI or the area?
- If the latter is sufficient, does the court have to take in account the context in which the disputed term is used? Or can the context, e.g if it indicates the true origin of the product, overcome the unlawful indirect use, evocation or other false or misleading indication?
AG Henrik Saugmandsgaard Øe, delivered his opinion in the case earlier this year concluding that the prohibition under Article 16 would be “unlikely to apply in circumstances such as [in this case], in so far as the disputed term, ‘Glen’, does not have a sufficiently clear and direct link with the protected GI in question, ‘Scotch Whisky’, or with the country with which it is associated — the ‘United Kingdom (Scotland)’ — in order for that term to constitute a ‘false or misleading indication … liable to convey a false impression as to its origin’”. This would be even more so if all the elements featured on the label which expressly refer to the exact origin of the product in question were to be take into account. He used the examples of Irish and Canadian whiskies that also use the word 'Glen' on their labels to demonstrate this.
The CJEU's judgment sets out the extent to which GIs enjoy protection under the Regulation, namely:
- To qualify as an 'indirect use' under Article 16(a) of the Regulation the disputed designation must be either identical or phonetically/visually similar to the protected GI. In this case the disputed designation 'Glen' is not identical or visually/phonetically similar therefore it was not sufficient that the mark was able to evoke in a consumer some kind of association with the GI or the area relating to it.
- For the purpose of establishing that there was an 'evocation' of a GI under Article 16(b) of the Regulation the:
- District Court of Hamburg must determine whether an average consumer, who was reasonably well-informed, observant and circumspect, when confronted with the disputed designation, would directly trigger an image of the product in their mind for which the indication is protected. If there is no phonetic/visual similarity or partial incorporation of the GI in the disputed designation, the Court must take into account the conceptual proximity, if any, between the disputed designation and the GI.
- context surrounding the disputed designation or the fact that the designation was accompanied by information indicating the true origin of the product must not be taken into account when determining infringement.
- To determine whether there was a 'false or misleading indication' under Article 16(c) of the Regulation, the context in which the disputed designation was used must not be taken in account.
Therefore in this case the District Court of Hamburg will now have to determine whether an average consumer directly thinks of the GI, "Scotch Whisky" when confronted with a comparable product with the designation 'Glen'.
This decision gives quite a broad scope of protection for GIs under the Regulation. The fact that CJEU has found that surrounding information is irrelevant when determining infringement of the GI gives rise to a number of questions as to the extent of what is to be assessed as infringing. For instance, is the disputed designation 'Glen' or 'Glen Buchenbach'? Or, if the disputed designation was 'Waldhorn Glen Buchenbach' would that potentially still be infringing?
We look forward to the District Court of Hamburg's decision and will provide an update on this case when we hear more!