CJEU rules on Scotch whisky GI in German dispute
The Court of Justice of the European Union (CJEU) has ruled on a case in which a German individual was accused of violating the Scotch Whisky Association’s ( SWA) geographical indication (GI) rights.
This case revolves around whether the designation ‘Glen’ makes consumers conjure up images of Scotland.
The SWA brought an action before the Regional Court of Hamburg, Germany (Landgericht Hamburg) against Michael Klotz for marketing German-produced whisky online under the designation ‘Glen Buchenbach’.
It alleged that the use of the word ‘Glen’ infringed article 16(a) to (c) of Regulation No. 110/2008, which protects GI products and prevents them from being exploited.
According to the SWA, the designation ‘Glen’ is widely used in Scotland as an alternative to the word ‘valley’ and therefore invokes in the relevant public an association of Scotland and Scotch whisky, despite other information on the German bottle indicating Germany as its place of origin.
The German court asked the CJEU to clarify whether the terms “indirect commercial use” and “evocation” require the registered GI to be identical or phonetically and/or visually similar to another product, or whether just an association to the geographical area is enough.
It also asked for clarification when determining whether there is any “false or misleading indication” and if the context in which the disputed element is embedded plays a role. Alternatively, can that context counteract any misleading indication, even if that element is accompanied by an indication of the true origin of the product?
In regards to the first question, the CJEU said that the sign at issue must make use of the registered GI in an identical form. Failing that, it must be used in a way that is at least phonetically and/or visually highly similar. It also said the “indirect” use requires the GI to “feature in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it”.
The CJEU said that “indirect commercial use” of a registered GI must therefore be used in a way that is identical or phonetically and/or visually similar to the GI. Furthermore, it is not sufficient that the “element is liable to evoke in the relevant public some kind of association with the indication concerned or the GI area”.
Regarding the term “evocation”, the CJEU said that the image directly triggered by the product must be that of the GI-protected product. In this case, when consumers read the word ‘Glen’, is Scotch whisky the first image that is triggered?
Concerning the last question, the expressions “any other” and “indication” can include information in any form on the description or labelling of the product providing information about the origin of the product.
“If a false or misleading indication could nonetheless be permitted because it is accompanied by additional information relating, in particular, to the true origin of the product concerned, that provision would be deprived of practical effect,” said the CJEU.
Therefore, for the purpose of establishing that there is a “false or misleading indication”, the context in which the disputed element is used should not be taken into account.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories
Right to private life may not deprive copyright, says AG
