Another "Glen", another GI Violation– Hamburg Court considers "Glen Els" an Evocation of "Scotch Whisky"

Can a protected geographical indication (GI) be infringed by a sign that does not contain any of the words composing that GI? The CJEU recently had the opportunity to rule on this question in a case involving a German whisky under the brand "Glen Buchenbach", allegedly infringing the registered GI "Scotch Whisky" (case C-44/17, Katpost here). 

Based on the CJEU decision in Glen Buchenbach, the District Court of Hamburg ultimately issued an injunction against "Glen Buchenbach" for containing a "misleading indication" within the meaning of Art. 16(c) of the Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (the "Spirits Regulation"; Katpost here). However, it considered that "glen" was not sufficient for a finding of "evocation" of the protected GI within the meaning of Art. 16(b) of the Spirits Regulation. 

The Hanseatic Higher Regional Court of Hamburg (which is the appellate court of the Hamburg District Court) has now addressed virtually the same questions regarding "Glen Els", a whisky manufactured in the German Harz region (and advertised as "Single Hercynian Malt Whisky"). 

The first instance court dismissed the lawsuit brought by the Scotch Whisky Association (prior to the above mentioned Glen Buchenbach decision) and the Association appealed to the Higher Regional Court (case Nr. 3 U 262/16). 

Unlike in the Glen Buchenbach case, the Higher Regional Court found that the use of "Glen" in "Glen Els" constitutes both an "evocation" of the protected denomination "Scotch Whisky" (Art. 16(b)) and a "misleading indication" (Art. 16(c)). As the latter finding is to little surprise and merely confirms the outcome in Glen Buchenbach, only the analysis of Art. 16(b) will be summarized here. 

An "evocation" under Art. 16(b) does not require the use of a sign that is visually or phonetically similar to the protected GI (see C-75/15 Viiniverla, Katpost here). The only relevant question is whether the average European consumer is prompted by the sign to establish a direct conceptual link to products protected by the GI, whereby a loose association of ideas is not sufficient. The Court finds that "Glen" establishes such a conceptual link to "Scotch Whisky" in this case. It reaches this outcome by considering the following:

1. "Glen" is a Scottish term for "valley" and it is used in whisky brands from Scotland as a reference to the valley of origin of the product. All whisky brands distributed in the EU and that contain the term "Glen" originate from Scotland.
2. The protected GI "Scotch Whisky" contains an explicit reference to the geographical origin. The reference to Scotland can thus be equated to a reference to the GI "Scotch Whisky". There is no difference (from the consumer's point of view) between products under the GI "Scotch Whisky" and whisky from Scotland, given that "only Scotch Whisky can be manufactured in Scotland".
3. The association between "Glen" and the protected GI is not merely indirect. This is confirmed by survey evidence provided by the Plaintiff, by trademark registrations and court decisions of EU member states.
4. The product at stake (whisky) already creates an association with Scotland. Such association is reinforced by the use of the term "Glen". In this regard, it did not help that the defendant advertised "Glen Els" explicitly as a "homage to famous Scotch brands".
5. The term "Els" does not have any meaning and does not change the perception of the term "Glen" by the relevant public. The survey evidence provided by Plaintiff shows, inter alia, that 37% of respondents expect a specific geographical origin when seeing the term "Glen". The design and other elements on the bottles of "Glen Els" (which in part explicitly refer to the Harz region in Germany) are irrelevant, as explicitly stated in Art. 16(b) of the Spirits Regulation.

A Word on Survey Evidence

Glen Els, the morning after

The Hanseatic Higher Regional Court opined that not all the principles that have been developed with regard to surveys relating to acquired distinctiveness can be applied to surveys regarding the expectation of a geographical origin. In particular, the Plaintiff was correct to include those respondents who declared that they had never previously heard of the term "glen", as they may still have relevant expectations of origin with regard to this term, for the reason discussed above.

Although the survey evidence does not show that a majority of respondents understand "glen" as an evocation of "Scotch Whisky", it does show that a relevant share of respondents understand "glen" as a reference to Scotch Whisky (14%) or Scotland (10%). Thus, one fourth of respondents recognized some kind of association to the geographical origin of Scotch Whisky. A further 6% associates the term with whisky and 8% with a product of particular (high) quality. Although the survey does not constitute substantive proof of Plaintiff's claim, together with the rest of the evidence on file, it does support the Plaintiff's case. 

Picture on the left by Michael Kramer licensed under CC BY-SA 3.0