Scope of protection: “Glen” as an impermissible evocation to “Scotch whisky”
Once again, the Higher Regional Court of Hamburg had to decide on a German Whisky with a designation including the Gaelic word “Glen”. The Hamburg Court ruled that whisky which is not Scotch Whisky may not be sold under the geographic designation “Glen Buchenbach”. See Higher Regional Court of Hamburg, decision of 20 January 2022, 5 U 43/19.
The Issue – Scope of protection of a geographic designation of origin
The Plaintiff, The Scotch Whisky Association (SWA), took offence at the name of a single malt whisky produced in Berglen in Swabia, Germany, labelled as “Glen Buchenbach – Swabian Single Malt Whisky”. The SWA claimed that the name would infringe the geographic indication “Scotch Whisky” and was therefore in violation of Art. 16 Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (EU Spirits Regulation).
The court referred questions to the CJEU asking for guidance on the scope of protection under Art. 16 EU Spirits Regulation.
The CJEU’s answers
The CJEU found, inter alia, that in determining whether there is an evocation within the meaning of Article 16 lit. b of the EU Spirits Regulation, it is necessary to consider whether the disputed geographic indication would cause the average consumer to make an immediate association with “Scotch Whisky”. In case of an absence of phonetic or visual similarity between the disputed designation and “Scotch Whisky”, any conceptual proximity needs to be taken into account. See CJEU, decision of 7 June 2018, C-44/17.
The Ruling – A chain of associations ending at “Scotch Whisky” suffices
Applying the standards set by the CJEU, the Hamburg District Court ruled in favour of the SWA. This decision (of 7 February 2019, 327 O 127/16) was upheld by the Higher Reginal Court. The Court held that
– the indication “Glen” is an evocation within the meaning of Art. 16 lit. b of the EU Regulation No 110/2008
– the indication “Glen” in “Glen Buchenbach” is able to evoke an immediate mental association with goods bearing the geographical indication “Scotch Whisky” in case of the product being a whisky
– additional information and remarks on the product, such as “Swabian Single Malt Whisky” or “Deutsches Erzeugnis” (produce of Germany) would not alter this result.
Comment – Geographical indications strong as ever
After the Higher Regional Court of Hamburg had already deemed the designation “The Glen Els” as an impermissible evocation to “Scotch Whisky” in 2019 (decision of 19 September 2019, 3 U 262/16) and when taking the CJEU’s ruling into consideration, the present decision may not seem surprising. It must, however, be noted that Art. 16 EU Spirits Regulation is interpreted widely and almost as a general prohibition of misleading information. This is interesting not only to the producers of spirits because parallel wordings to Art. 16 of the EU Spirits Regulation can be found in Art. 13 of Regulation No 1151/2012 on quality schemes for agricultural products and foodstuffs, in Art. 103 of Regulation No 1308/2013 for agricultural products and in Art. 20 of Regulation No 251/2014 on aromatised wine products. In any case, when naming products such as spirit drinks, one should carefully consider the terms used to stay clear of a connection to geographical indications.