‘Glen Buchenbach’ is a misleading indication, Hamburg Court rules

A bottle of Glen Buchenbach

A few months ago former GuestKat Mirko Brüß reported on a decision of the Court of Justice of the European Union (CJEU) concerning Geographical Indications (GIs), whisky, and a particular liquor produced in Germany.

Now, the referring court has decided the case after it returned from Luxembourg.

Mirko discusses the latest ruling:

"After a CJEU decision that left much room for speculation, the Scotch Whisky Association from Scotland (TSWA) scored a first victory in a case of interest to Whisky- and IP-connoisseurs alike.

As reported in this blog, 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’ would infringe registered GI ‘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 District Court of Hamburg stayed the proceedings and referred three questions to the CJEU, the main answers the CJEU gave being: 

• 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 (as was the case here). 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 Article 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. 

With this in mind, the District Court of Hamburg has now ruled in favour of TSWA (case No. 327 O 127/16) and enjoined the defendant from selling a Whisky which is not Scotch Whisky under the designation ‘Glen Buchenbach’.

Not surprisingly, the judges found that no infringement of Article 16(a) had occurred, since ‘Glen Buchenbach’ does not make actual use of the registered indication ‘Scotch Whisky’.

This Kat prefers vodka water to whisky

The Court went on to explain that no ‘evocation’ in the sense of Article 16(b) occurred. While no visual and/or phonetic similarity between the disputed designation and the protected geographical indication exist, the CJEU found that an ‘evocation’ may be found to occur even in the absence of such similarity. However, this was not the case here, since the judges saw no conceptual proximity between the designation and the indication. ‘Glen’ could not be used as a synonym for ‘Scotch Whisky’ and would also not describe the term. The fact that the term ‘Glen’ might cause a chain of associations ending at ‘Scotch Whisky’ would not be sufficient for an ‘evocation’ in the sense of Art. 16(b). 

As a bit of a surprise (to this former GuestKat and early Twitter commentators, at least) came the Court's finding that the use of the indication ‘Glen’ on a Whisky that is not ‘Scotch Whisky’ does in fact constitute a ‘misleading indication’, liable to convey a false impression as to the product’s origin under Article 16(c).

The Court argued that the designation ‘Glen’ gives the average European consumer who is reasonably well informed and reasonably observant and circumspect the impression that this Whisky is a ‘Scotch Whisky’. Almost all Whiskys which bear the designation ‘Glen’ in their name would be Scotch Whiskys, the Court found. It would also be irrelevant that not all Scotch Whiskys bear the designation ‘Glen’, because the only decisive factor in the dispute would be whether there is a risk that consumers will think of Scotch Whisky when they hear a whisky bearing the name 'Glen' and not whether they think of 'Glen' when they hear Scotch Whisky.

To conclude, the Court repeated the CJEU’s finding that the additional information on the disputed product, such as „Swabian Single Malt Whisky“ and „Deutsches Erzeugnis“ (produce of Germany) could not be used to restrict the protection of geographical indications and must not be taken into account when assessing the misleading indication.

The Court’s ruling is not yet final, since the defendant can appeal the case to the Higher Regional Court of Hamburg. The question whether a bottle of ‘Glen Buchenbach’ will become a rarity remains unsolved."