Does ‘Glen’ make you think of Scottish whisky? CJEU leaves answer to the local court

A bottle of Glen Buchenbach

As previously reported on this blog, the CJEU had to decide on a case of interest to Whisky- and IP-connoisseurs alike.

The Scotch Whisky Association from Scotland (TSWA) took offence at 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 Whisky in question is called ‘Glen Buchenbach’.

 

TSWA claimed 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.

The interesting detail in this case is that ‘Glen Buchenbach’ does not use any part of the registered geographical indication ‘Scotch Whisky’, but ‘Glen’ certainly makes you think of Scotland. But does it make you think of Scottish Whisky?

The District Court of Hamburg, where the case originated, referred the following questions to the Court for a preliminary ruling:

(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, [ (6)] 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?’

In its judgment on June 7th, the CJEU agreed with Advocate General (AG) Saugmandsgaard Øe’s assessment of the case, which was detailed here.

The first question

Looking at point (a) of Article 16, the CJEU found that the use of the term ‘Glen’ does not amount to a direct or indirect commercial use of the registered geographical indication ‘Scotch Whisky’.

According to the court, both alternatives require that the protected geographical indication itself be used, which was not the case here. While TSWA had argued that an ‘indirect’ commercial use of a registered geographical indication would not require use to be made of that indication itself, the court disagreed. It found that a ‘direct’ use takes place when the protected geographical indication is affixed directly to the product concerned or its packaging, while ‘indirect’ use requires the indication to feature in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it (para 32).

The second question

Next, the judges looked at Article 16(b) and the concept of ‘evocation’ of a registered geographical indication. The concept of ‘evocation’ is obviously wider than ‘use’ in the sense of Article 16(b). The referring court 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 existed that clarify whether a phonetic and/or visual similarity between the signs at issue would be a necessary requirement for the existence of evocation to be established.

Again siding with AG Saugmandsgaard Øe, the CJEU ruled that the partial incorporation of a protected geographical indication in the sign at issue is not an essential condition for Article 16(b) of Regulation No 110/2008 to apply (para 46). Going even further, neither a phonetic or visual similarity between the disputed designation and the protected geographical indication would be an essential condition for establishing that there is an ‘evocation’ within the meaning of Article 16(b) (para 49). While both these conditions could result in a breach of Article 16(b), they are not a condition sine qua non - there are other factors to be taken into account.

Citing Viiniverla, the CJEU stated one also needs to take account of the criterion of ‘conceptual proximity’, since such proximity, like the other criteria mentioned above, may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected (para 50).

Does this Kat think of Scotch Whisky?

The referring court will now have to determine whether consumers think directly of ‘Scotch Whisky’ when confronted with ‘Glen Buchenbach’, which incorporates the disputed designation ‘Glen’. In doing so, the CJEU found, the court will have to determine the view of an average European consumer who is reasonably well informed and reasonably observant and circumspect (para 47).

  

The third question

Finally, the CJEU looked at Article 16(c) and the impact of additional information surrounding the disputed designation. In essence, the Hamburg Court asked the CJEU whether a ‘false or misleading indication’ could be legitimized by accompanying it with additional information relating, in particular, to the true origin of the product.

First, the judges agreed with AG Saugmandsgaard Øe that Article 16 of Regulation No 110/2008 contains a graduated list of prohibited conduct. Point (c) widens the scope of the protection to include ‘any other … indication’ that is false or misleading, while not actually evoking the protected indication. Such indication could be present on the description, presentation or labelling of the product concerned.

The court is very clear that if it were possible to restrict the protection of geographical indications by the fact that additional information is included alongside an indication which is false or misleading, the objectives of Regulation No 110/2008 (to protect registered geographical indications, both in the interests of consumers who should not be misled by inappropriate indications, and in the interests of economic operators) could not be met (para 70). The judges therefore concluded that when assessing an infringement of Article 16(c), account is not to be taken of the context in which the disputed element is used.

Since this GuestKat is based in Hamburg, he will keep an eye on the case and provide an update once the District Court of Hamburg has decided on the merits.

TL;DR [if you are wondering what this means, wonder no further and see here]

The CJEU clarified the following for future cases:

- A direct or indirect commercial use of a geographical indication under Article 16(a) requires the actual use of the indication in an identical form or at least in a form that is phonetically and/or visually highly similar.

- An ‘evocation’ in the sense of Article 16(b) can occur even when no visual or phonetic similarity between the designation and the indication exists. The decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. Any conceptual proximity between the designation and the indication needs to be taken into account.

- When assessing a ‘false or misleading indication’ under Artitcle 16(c), the context in which the disputed element is used shall not be considered. It is impossible to ‘heal’ misleading indications by accompanying it e.g. with the true origin of the product.