Whether a Glen is a Scotch is a question is to be determined by the District Court of Hamburg following a ruling by the CJEU that an evocation of a protected geographical indication can occur, even where there is no visual or phonetic similarity between the designation and the indication. The German court will have to determine whether seeing GLEN BUCHENBACH would cause consumers to think of Scotch whisky.
Background
GLEN BUCHENBACH whiskey is produced by a distillery in the Buchenbach valley in Baden-Württemberg, Germany. The Scotch Whisky Association (“SWA”) argued that use of the term GLEN in the name implies a connection to Scotch whisky and proceeded to sue the producer of GLEN BUCHENBACH.
The SWA claimed that there was a breach of Article 16(a)–(c) of Regulation 110/2008 (Regulation protecting geographic indicators) on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (the “Regulations”). Under the Regulations, Scotch whisky is a protected geographical indication meaning that the term can only be used on such goods when made in Scotland under specific production criteria.
Although the term GLEN (a Gaelic word that means narrow valley) is not specifically protected by the Regulations, it was argued that the name GLEN BUCHENBACH would be likely to cause consumers to make a connection between it and the protected geographical indication Scotch whisky.
The case started out in the District Court of Hamburg, however the proceedings were stayed while questions were referred to the Court of Justice of the European Union (“CJEU”). In particular, the CJEU was asked whether the ‘indirect commercial use’ or ‘evocation’ of a registered geographical indication requires a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or whether it is sufficient if the disputed element evokes in the relevant public some kind of association with the registered geographical indication or geographical area. Moreover, the CJEU was asked whether the context in which the disputed element is presented plays a role and if an indication of the true origin of the product can counteract what would otherwise be unlawful.
Decision of the CJEU
In agreeing with the opinion of the Advocate General, the CJEU held that use of the term GLEN does not amount to a direct or indirect commercial use of the registered geographical indication Scotch whisky. However, in relation to the protection afforded by Article 16(b), which protects against any evocation of the geographical indication, the CJEU ruled that partial incorporation of a protected geographical indication is not an essential condition for Article 16(b) to apply. Neither phonetic or visual similarity would be an essential condition for establishing that there is an evocation.
Instead, the question to be considered is whether an average European consumer, who is reasonably well-informed and reasonably observant would make a connection between the disputed element and the protected geographical indication. This question now falls to the referring court (the District Court of Hamburg), which must decide whether ‘Glen Buchenbach’ whiskey evokes ‘Scotch Whisky’ in the mind of the consumer.
Furthermore, the CJEU also ruled that account is not to be taken of the context in which the disputed element is used. The CJEU made it clear that misleading indications cannot be cured by accompanying them with the true origin of the product.
Beware when naming products!
Although the determination of the District Court of Hamburg remains to be seen, one thing to be taken from the decision of the CJEU is that manufacturers must be cautious in respect of naming products, where the name chosen might evoke a connection to a protected geographical indication.
Contributed by: David Cullen
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