The background to this case concerns an action made by the Scottish Whisky Association against the Waldhorn Distillery in Germany requesting an order that would prevent the German Distillery from the marketing the Whisky Glen Buchenbach. The German whisky described on the label as a “Swabian Single Malt Whisky” is distilled near Stuttgart in the Buchenbach Valley, is labelled as made in Germany and used the word Glen as a play on words.
The Scottish Whisky Association claimed that use of the term ‘Glen’ infringes the registered geographical indication “Scotch Whisky”, in so far as it constitutes both indirect commercial use and an evocation of the registered geographical indication, as well as being a false or misleading indication, prohibited under Article 16(a), (b) and (c) of Regulation No 110/2008. The argument being that the word “Glen” the Gaelic word for valley, would mislead consumers into thinking the whisky was Scottish.
The District Court of Hamburg referred the following questions to the ECJ:
- Whether “indirect commercial use”, within the meaning of Article 16(a) or “evocation” referred to in Article 16(b) of that regulation, requires that the protected geographical indication be used in an identical or phonetically and/or visually similar form, or if it is sufficient that the disputed element evokes in the relevant public some kind of association with that indication.
- Whether, if the mere association of ideas is sufficient, account should be taken, of the context in which the term used to designate the product at issue is embedded and, in particular, of the fact that it is also accompanied by an indication, on the label, of the true origin of the product.
- Lastly, it asks whether, when determining whether there is any ‘other false or misleading indication’ within the meaning of Article 16(c) of that regulation, the context of the disputed term should be taken into account.
The ECJ found that:
- “ Indirect use” of a FI requires the disputed designation to be indentical, phonetically or visually similar to the indication and it is not sufficient to evoke some kind of association to the relevant GI.
- For the “Evocation” of a GI there is no requirement for there to be a phonetic and visual similarity between the disputed designation and the indication in question. It is not, however, sufficient that the disputed designation is liable to evoke in the relevant public some kind of association of ideas with the protected indication or the geographical area. It is necessary to account for conceptual proximity between the GI and the disputed designation.
- for the purposes of establishing the existence of a ‘false or misleading indication’ prohibited by that provision, 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, in particular with regard to its true origin.
- There was doubt as to whether there was sufficient conceptual proximity between the GI and the designation.
- It is not a decision for the ECJ to assess the nature of the evocation.
- It was referred back to the National Court to make a decision, to determine whether, if the average European consumer would associated the word ‘Glen’, with that of ‘Scotch Whisky’. Even if the referring court were to find that consumers systematically associate the word ‘Glen’ with whisky, the required close connection to Scottish whisky, and thus the necessary proximity to the indication ‘Scotch Whisky’, may be lacking.
All in all it’s quite a high threshold for the National Court of Hamburg to determine, as consumers may associate a glen with Scotland or with whisky, but whether it could be associated particularly with Scottish Whisky is yet to be determined.