Here is the glen, and here the door: German whisky manufacturer must drop 'Glen' name

This Kat is enjoying the water of life

The word 'glen' tends to conjure images of misty hills and regal stags in Scotland's ancient valleys. Such associations are strong enough that the Scotch Whisky Association has recently succeeded in its near-decade long battle against the Waldhorn distillery of Berglen, Baden-Württemberg. Previous IPKat coverage can be found here, here and here.

Despite the 'Glen Buchenbach' whisky's labelling indicating that it is a German product, the Hanseatic Higher Regional Court in Hamburg has rejected an appeal of a 2019 judgment from the Hamburg Regional Court that the name must be changed for infringing the Scotch geographical indication. Following its judgment of 20 January 2022 (Az. 5 U 43/19), the Higher Regional Court's spokesman stated that "it is sufficient if the product can be directly associated with the protected geographical indicated based on its name", even if only allusory.

Background

Regulation No 110/2008 concerns GIs for spirit drinks, in which Art. 16 concerns protection against direct or indirect commercial use which exploits the registered GI's reputation, misuse, imitation or evocation, false or misleading indications or impressions of origin, or any other practice liable to mislead the consumer as to the true origin of the product. The SWA's complaint concerned Art. 16(a)-(c), arguing that a GI for a spirit drink is protected not only against the actual use of such an indication, but also references suggesting the origin of that indication. In particular, the word 'Glen' for valley is used especially frequently on whisky products. (This Kat suggests that the Buchenbach product could instead be labelled along the lines of 'Buchenbachtal', Tal being valley in German.) 

The CJEU's approach

The earlier ruling came in the wake of case C-44/17, in which the CJEU guided the national court in its interpretation of a series of question asked by the Hamburg Regional Court before its 2019 ruling. These were concerned with whether the "context in which the disputed element is embedded" affect whether there is a misleading indication. That is, whether it is sufficient that the element evokes some kind of association with the GI or its related area, even if there are potentially counteracting elements presented alongside it. 

Regarding Art. 16(a), the CJEU held that "the sign at issue must use the registered geographical indication in an identical form or at least in a form that is phonetically and/or visually highly similar", with the direct/indirect distinction applying to affixing the GI to the product itself versus supplementary materials. The element being liable to evoke an association with the GI or its associated area is for Art.16(a) insufficient. 

This can be distinguished from Art. 16(b), which covers situations where the sign at issue does not use the GI as such, but rather suggests it such that consumers would associate the sign and the GI, with the mental image triggered directly in the mind of the average European consumer who is reasonably well informed and reasonably observant and circumspect being that of the product whose indication is protected. The CJEU considered that this cannot be counterbalanced by elements which indicate the product's true origin, making significant reference to Case C‑75/15, Viiniverla. 

Art. 16(c), use of a false or misleading indication, meanwhile, is also not to be affected by the context in which a disputed element is applied, else the provision would be "deprived of practical effect" by allowing unscrupulous providers to supply additional information.

Commentary

Despite the German press's painting of a David vs Goliath situation of a family business against the powerful trade body (one headline describing the "Whisky rebels from the forbidden valley"), it seems fairly intuitive that the Buchenbach product would not have had 'Glen' incorporated to its name if not for the reputation and quality of Scotch. With the product being labelled not only with 'Glen' but also as a single malt whisky, it can be distinguished from Irish whiskeys using 'Glen' in their name, given the shared linguistic roots.

While the German distillery did argue that the court's approach would give whisky-makers an expansive exclusionary right over anything even vaguely Scottish, it's this (Scottish) Kat's view that there is a difference between, say, a Scottish forename and the archetypal distilling location of whisky. The German distillery, meanwhile, "accepts but does not understand" how the judgment could have "confirmed that only Scotland has valleys". 

Photo by Teresa Boardman via Flickr (CC BY 2.0).