22 February 2018Trademarks

AG issues opinion in Scotch Whisky clash

When the average European consumer is confronted with a comparable product bearing the designation ‘Glen’, is the image of ‘Scotch whisky’ triggered in their mind?

That’s the question that an advocate general (AG) at the Court of Justice of the European Union (CJEU) believes is solely for the Regional Court of Hamburg, Germany (Landgericht Hamburg) to decide.

AG Saugmandsgaard Øe issued his opinion on the dispute involving the Scotch Whisky Association (SWA) and a German producer who has named his whisky “Glen Buchenbach”, today, February 22.

The SWA, which promotes the interests of the whisky industry from Scotland, took issue with the use of the word “glen”, which it states indicates that the whisky comes from Scotland.

“Despite the other information on the label, the term ‘Glen’ is allegedly liable to cause consumers to make an inappropriate connection to the protected GI and, thus, to mislead them as to the true origin of the whisky in question,” said a press release from the CJEU.

The referring German court is seeking clarification on the type of connection there must be between a product and a word or other factor for there to be infringement of protected EU status.

It has asked the CJEU whether use of the name is capable of constituting “indirect use” or an “evocation” of the registered GI, or a “false or misleading indication liable to convey a false impression as to [the] origin” of the product.

According to the Landgericht Hamburg, the word ‘glen’ is a Gaelic word meaning ‘a narrow valley’, and 31 out of 116 distilleries producing ‘Scotch Whisky’ are named after the glen in which they are located.

However, it also noted that some whiskies produced outside of Scotland have ‘glen’ as part of their name.

Saugmandsgaard Øe explained that a GI is only subject to prohibited indirect use if the disputed word is “identical or phonetically and/or visually similar to the indication in question”.

It’s not sufficient that the designation is “liable to evoke in the relevant public some kind of association of ideas with the indication or the relevant geographical area”, he added.

The AG also said that a disputed word doesn’t necessarily require phonetic and visual similarity for it to constitute an unlawful ‘evocation’ of that indication, but being liable to evoke some kind of association of ideas is not sufficient.

If the word is not phonetically and visually similar with the GI, it’s necessary to take account of the conceptual proximity existing between the two, “insofar as that proximity is of such a nature as to lead the consumer to have in mind, as [a] reference image, the product whose indication is protected”.

Saugmandsgaard Øe stated that it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, when establishing the existence of a prohibited evocation or a “false and misleading indication”.

The AG’s opinion is not binding on the CJEU.

A spokesperson for SWA said: “The opinion of the AG makes it clear that GIs, such as Scotch whisky, are protected from the use of names which evoke the GI and that there is no requirement that the disputed name should be similar to the name of the GI to get that protection.”

A spokesperson for the German producer told WIPR that it was satisfied with the AG’s opinion because, in the end, he stated that even if Glen is recognised by the customer as standing for whisky, the required connection to Scotch whisky may be lacking.

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More on this story

7 June 2018   The Court of Justice of the European Union has ruled on a case in which a German individual was accused of violating the Scotch Whisky Association’s geographical indication rights.
21 September 2018   To violate a geographical indication in the EU, the disputed mark must trigger the consumer’s association with the GI-protected product—it is not sufficient that the geographical area alone is brought to mind, an industry conference in Paris heard.
20 February 2019   The Scotch Whisky Association has obtained victory in a six-year legal battle to stop a German distillery from selling a whisky called ‘Glen Buchenbach’.