European Union: Scotland And Swabia Are Only Divided By A Narrow Valley

Last Updated: 9 March 2018
Article by Barbara Niemann Fadani

reads the headline of the article to which I link here and it is not about geographical changes to the European landscape or new political alliances and even less about Brexit.

It is about an intellectual property litigation case pending with the Court of Justice of the European Union CJEU (Case C-44/17) for which the Advocate General has just presented his final arguments.

A German whisky distillery.... - yes, Germans do more than just brewing beer, they follow the trend of Craft Beer, Craft Gin and Craft anything. Gin and Whisky distilleries are springing up everywhere and, just like everyone else, they tend to brand their products with witty and creative names and give them a cool look , but back to the story.

A German whisky distillery, in the Swabian village of Berglen located in the valley of Buchenbach named their Whisky "Glen Buchenbach". Nice idea, but very much to the dislike of the Scottish Whisky Association who sued the distillery in the Regional Court of Hamburg and claimed that the distillery should not use the name because it was confusing customers about the origin of the product.

According to the Scottish Whisky Association the use of the word "Glen" for a German product was an infringement of the registered geographical indication "Scotch Whisky" because "Glen", being the Gaelic word for a narrow valley, would automatically make customers believe that the product had a Scottish origin.

The distillery defended itself with the fact that "Glen" was part of the name of the location where the product was made, namely Berglen, and furthermore, the label on the bottles also showed the following description: "Waldhornbrennerei (Waldhorn distillery), Glen Buchenbach, Swabian Single Malt Whisky, Deutsches Erzeugnis (German product), Hergestellt in den Berglen (Produced in the Berglen)".

The Regional Court of Hamburg found that "Glen" was a word in Gaelic language that is spoken in Scotland and of 116 distilleries in Scotland, 31 used the word "Glen" in their name, usually in connection with the name of the valley in which the distilleries are located. The Regional Court of Hamburg also found that there are distilleries outside of Scotland that use the word "Glen" in their name, namely in Ireland, Canada and Germany. The Court called upon the Court of Justice of the European Union CJEU, though, because it needed clarification regarding the interpretation of Art. 16 Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.

The Regional Court of Hamburg raised the questions of whether "indirect use", referred to in Art. 16(a) of Regulation No. 110/2008 and "evocation ", referred to in Art. 16(b) of Regulation No. 110/2008 required that the disputed denomination had phonetic and visual similarity with the registered geographical indication, or if a mere association of ideas was sufficient; and if the context in which the disputed denomination was used or additional information surrounding the disputed sign were relevant.

Advocate General Saugmansgard Øe is of the opinion that "indirect use" requires that use be made of the indication in the form in which it was registered, at at least in a form similar to it, because "use" would require, by definition, that the geographical indication itself be used. "Indirect use" could not be interpreted as relating to situations, where the designation would not make any express reference to the registered geographical indication. Instead "indirect use" denotes a use that contrasts direct use, or the geographical indication being affixed directly to the product. It should be interpreted as use of the geographical indication for e.g. supplementary marketing and similar. Art. 16(a) of Regulation 110/2008 consequently would not apply in the present case because "Glen" and "Scotch Whisky" are not similar.

"Evocation" in Art. 16(b) of the Regulation No. 110/2008, on the contrary, would not require that the disputed denomination was identical or phonetically and/or visually similar to the registered geographical indication, but covered situations in which, "when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose indication is protected." Some association with such product is not sufficient.

The Regional Court of Hamburg will need to decide whether the image triggered in the consumer's mind when confronted with the product is that of Scottish Whisky.  However, the Advocate General's opinion appears to hint that the required close connection to Scottish Whisky –and, therefore, to the geographical indication "Scotch Whisky" – might be lacking, even if the Regional court were to find that the average European consumer would systematically associate the word "Glen" with Whisky.

Regarding the question, whether additional information or the context surrounding the disputed sign could have an impact on the assessment of an "evocation" in the sense of Art. 16(b) of the Regulation No. 110/2008, the Advocate General followed the opinion of the Italian, Greek and French governments as well as the Commission, that additional information or the context should be irrelevant. This because the wording of Art. 16(b) clearly refers to "any misuse, imitation or evocation, even if the true origin of the product is indicated". Furthermore case law of the CJEU has confirmed that it is irrelevant whether the place of manufacture is known to the consumers, and also whether the disputed designation is identical or refers to the name of the undertaking or the place of production, because Art. 16(b) does not require a likelihood of confusion of the customer.

The guideline for the CJEU regarding the interpretation of the Regulation is clear: No puns are admitted when it comes to registered geographical indications. However, the Regional Court of Hamburg will need to decide whether, when seeing "Glen", we think of Whisky in general or of Scottish Whisky in particular.

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