Does ‘Glen’ make you think of Scottish whisky? Advocate General Saugmandsgaard Øe does not think so

Scotch or not?
‘Glen Buchenbach’ is the name of a whisky that is produced by the Waldhorn distillery in Berglen, situated in the Buchenbach valley in Swabia (Baden-Württemberg, Germany). The Scotch Whisky Association from Scotland (TSWA) took offence at the name and sued Mr. Klotz, the producer of the Whisky, in Hamburg, Germany. TSWA claims that use of the term ‘Glen’ infringes the registered geographical indication ‘Scotch Whisky’ and asserted a breach of Art. 16 (a) - (c) of the Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.
 
Article 16 protects all the geographical indications registered in Annex III against practices liable to mislead the consumer as to the true origin of such products.

The District Court of Hamburg saw itself confronted with an interesting situation: whereas past cases that were decided by the CJEU involved product names or descriptions that included (part of) the protected geographical indication, in this case there is no similarity, whether phonetic or visual, between the disputed designation (‘Glen’) and the protected geographical indication (‘Scotch Whisky’). Yet, the disputed designation is allegedly liable to cause consumers to make an inappropriate connection with the protected geographical indication.

This led the Hamburg court to stay the proceedings and to refer the following questions to the CJEU for a preliminary ruling (C-44/17):

(1)      Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of Regulation No 110/2008 require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(2)      Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of Regulation No 110/2008 require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(3)      When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of Regulation No 110/2008, does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’

On February 22nd, Advocate General Saugmandsgaard Øe (AG) delivered his Opinion in the case. He concluded that the prohibition under Article 16 would be “unlikely to apply in circumstances such as those in the main proceedings, in so far as the disputed term, ‘Glen’, does not have a sufficiently clear and direct link with the protected geographical indication 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’”.

To get to this result, Saugmandsgaard Øe carefully analyzed Article 16 (a) - (c), looking at the wording, the context surrounding the provision at issue and the objectives of Regulation No 110/2008.

An important finding from the Opinion is that Article 16 “sets out a graduated list of prohibited acts, in which paragraph (c) is very different to the two previous paragraphs. Whereas Article 16(a) is limited to use of the protected geographical indication and paragraph (b) to misuse, imitation or evocation, paragraph (c) widens the scope of the protection to include ‘indications’ (information provided to consumers) on the description, presentation or labelling of the product concerned which, while not actually evoking the protected geographical indication, are ‘false or misleading’ as regards the links between the product concerned and that indication”.

This cat prefers wine to whisky
The first question

Looking at paragraph (a), the AG concluded that the use of the term ‘Glen’ does not amount to a direct or indirect commercial use of the registered geographical indication ‘Scotch Whisky’. TSWA claimed the norm should be interpreted in the sense that ‘indirect’ commercial use of a registered geographical indication would not require use to be made of that indication itself. The AG disagreed, first looking at the wording of paragraph (a) and stating it is apparent that the word ‘use’ in paragraph (a) requires, by definition, that the protected geographical indication itself be used, which was not the case here. This result was reinforced by the context surrounding the provision at issue. If paragraph (a) was to be interpreted in such a broad manner, there would be little room for application of paragraph (b) which applies to ‘misuse, imitation or evocation’.

In conclusion, the AG proposed that the answer to the first part of the first question should be that Article 16(a) must be interpreted as meaning that ‘indirect … use’ of a registered geographical indication, prohibited by that provision, requires the disputed designation to be identical or phonetically and/or visually similar to the indication in question.

The second question

Next, the AG turned to Article 16(b) and the concept of ‘evocation’ of a registered geographical indication. The referring court had observed that the CJEU has consistently interpreted the concept of ‘evocation’ as meaning that it ‘covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product the image triggered in his mind is that of the product whose designation is protected’. However, no such rulings exist that clarify whether a phonetic and/or visual similarity between the signs at issue is a necessary requirement for the existence of evocation to be established.

AG Saugmandsgaard Øe fist noted that the wording of Article 16(b) does not contain elements which allow for the precise identification of what is meant by the term ‘evocation’. Looking at past jurisprudence, he found that while those cases involved a partial incorporation of a protected designation, such use would not be a conditio sine qua non for the application of that provision.

A more important and central criterion in order to establish the existence of an ‘evocation’, would be to determine whether,"when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected". Such images could or could not be triggered both in cases where the protected designation was partially used or not used at all.

The phonetic and/or visual similarity would therefore not be an essential condition in order to establish the existence of an ‘evocation’, but would be instead one of several tests laid down by the CJEU for such a verification.

It will be up to the Judges of the Hamburg court to determine whether, ‘when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’. A possible conceptual proximity will have to be assessed when deciding this issue.

The AG concluded this part of his opinion proposing that the answer to the first part of the second question is that Article 16(b) must be interpreted as meaning that the ‘evocation’ of a registered geographical indication does not require that there necessarily be a phonetic and visual similarity between the disputed designation and the indication in question.

A mere association of ideas with the protected indication or the geographical area relating thereto would not be sufficient. In the absence of such similarity, it would be necessary to take account of the conceptual proximity existing between the indication in question and the disputed designation, in so far as that proximity is of such a nature as to lead the consumer to have in mind, as reference image, the product whose indication is protected.

Looking at the case at hand, the AG seemed inclined to deny the necessary conceptual proximity. While the term ‘Glen’ may be associated by consumers with whisky, the required close connection to Scottish whisky, and thus the necessary proximity to the indication ‘Scotch Whisky’, may be lacking.

The third question

Finally, the AG turned to Article 16(c) and the impact of additional information surrounding the disputed sign. The Hamburg Court asked the CJEU to rule on whether, for the purposes of determining whether there is ‘any false or misleading indication … liable to convey a false impression as to its origin’, within the meaning of Article 16(c), it is necessary to take account of the context in which the disputed element is used, in particular where the disputed element is accompanied by an indication of the true origin of the product.

AG Saugmandsgaard Øe concluded that Article 16(c) must be interpreted as meaning that, for the purposes of establishing the existence of a ‘false or misleading indication’, it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin.

To reach this conclusion, he once again looked at the wording, the context and the objectives pursued by Regulation No 110/2008. The wording makes no reference to any elements likely to surround and supplement, or even correct, the disputed designation. Had the EU legislature intended to allow an indication which is in itself false or misleading to be ‘corrected’ by additional information surrounding that indication, such a restriction would have been expressly provided for, which is not the case, the AG argued.

He found this interpretation confirmed by the objectives of the Regulation. If it was possible to counteract the potentially false or misleading nature of the disputed indication via the other information on the label of the product, the attainment of the Regulation’s objective to ensure the protection of geographical indications would be jeopardised.

Applying these findings to the case, the AG expressed his view that it “would be unlikely to apply in circumstances such as those in the main proceedings, in so far as the disputed term, ‘Glen’, does not have a sufficiently clear and direct link with the protected geographical indication 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.

While we have to wait for the CJEU’s judgment in this case, this Kat believes the AG has found a good balance between the conflicting interests. Indeed, a very broad interpretation of the ‘evocation’ criterion could extend the scope of that regulation in an unforeseeable way and there would be significant risks to the free movement of goods, as Mr. Klotz has pointed out in the proceedings.
Does ‘Glen’ make you think of Scottish whisky? Advocate General Saugmandsgaard Øe does not think so Does ‘Glen’ make you think of Scottish whisky? Advocate General Saugmandsgaard Øe does not think so Reviewed by Mirko Brüß on 13:41:00 Rating: 5

1 comment:

Dan Bereskin said...

The complaint by the Scotch Whisky Association (“SWA”) concerning use of “Glen Buchenbach” in relation to whisky produced in Gerglen, Germany brings to mind an unsuccessful opposition by SWA of the right of Glenora Distillers International Ltd. (“Glenora”) to register the trademark GLEN BRETON for single malt whiskey distilled in Cape Breton, Nova Scotia, Canada. The opposition primarily was based on the ground that the use of the word “glen” connotes whiskies distilled in Scotland. Evidence was filed as to the fame of certain Scottish whisky brands, including Glenlivet, Glenmorangie, and Glenfiddich. Section 10 of the Trademarks Act denies registration of any mark that “by ordinary and bona fide commercial usage become recognized in Canada as designating the . . .place of origin. . .of any wares. . .”

The Opposition Board was not persuaded there was sufficient evidence to prove that sober Canadian whisky consumers would believe there is an association between GLEN BRETON and whiskies distilled in Scotland.

The SWA appealed to the Federal Court Trial Division (first instance) for judicial review of the Opposition Board decision, and was successful. Additional evidence was filed before the Court demonstrating a certain level of confusion. The judge found that there was confusion as to the provenance of GLEN BRETON whisky, and that the word “glen” had, by ordinary and bona fide commercial use, become recognized as designating Scotch whiskey. GLEN BRETON thus was denied registration on the ground that it violates s. 10 of the Act.

Glenora then appealed to the Federal Court of Appeal, which reinstated the decision of the Opposition Board, essentially on the ground that that the word “glen” by itself is not entitled to protection under s. 10 of the Act, and that even if “GLEN” standing alone could be considered to be a mark entitled to protection under s. 10, GLEN and GLEN BRETON are sufficiently different that s. 10 protection for GLEN would not extend to GLEN BRETON. Interestingly, the Court of Appeal pointed out that if SWA’s position were correct, it would invalidate many Canadian trademark registrations of SWA members that comprise the word “glen” because the prohibition in s. 10 is against any registration by anyone of a mark that is recognized as a protected geographical indication.

Glenora appears to have become quite successful in launching a number of award-winning single malt whiskies. Despite the author’s general agreement with the Opposition Board and Court of Appeal decisions, he remains a devoted fan of single malt whiskies from Scotland, especially GLENFARCLAS.

Dan Bereskin
Bereskin & Parr LLP

Powered by Blogger.