Glen Whisky: scotch or not?

Published onAugust 2018

The Scotch Whisky Association is a Scottish organisation protecting the trade in Scottish whisky both in Scotland and abroad. Taking the view that the marketing of a whisky under the designation ‘Glen Buchenbach’ (which is produced by the Waldhorn distillery in Berglen, located in the Buchenbach valley in Swabia, Germany) was infringing the geographical indication ‘Scotch Whisky’, it brought an action before the Landgericht Hamburg (Regional Court in Hamburg, Germany), which referred to the Court of Justice of the European Union for an interpretation of Article 16(a) to (c) of 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.

According to said article, “the geographical indications registered in Annex III shall be protected against:

  • a) Any direct or indirect commercial use in respect of products not covered by the registration in so far as those products are comparable to the spirit drink registered under that geographical indication or insofar as such use exploits the reputation of the registered geographical indication;
  • b) Any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other similar term;
  • c) Any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin”.

The questions referred to the Court for a preliminary ruling were designed to determine if a designation such as ‘Glen Buchenbach’, that does not include any element appearing close to the geographical indication ‘Scotch Whisky’, could be prohibited on the grounds of said geographical indication. In other words, may the designation ‘Glen Buchenbach’ be considered a direct or indirect commercial use of the GI ‘Scotch Whisky’, or an evocation of the GI ‘Scotch Whisky’, or a false or misleading indication in connection with the GI ‘Scotch Whisky’?

The decision of the Court of Justice in the Case C‑44/17, Scotch Whisky Association v Michael Klotz, was issued June 7th, 2018.

Reasonably, the Court held that for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it, and that accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto. It means that the designation ‘Glen Buchenbach’ cannot be considered as an indirect (or direct for that matter) commercial use of the GI ‘Scotch Whisky’.

But may the designation ‘Glen Buchenbach’ be considered an evocation of the GI ‘Scotch Whisky’? It is not part of the Court’s prerogatives to give a straight positive or negative answer to that question. However, the Court explains how Article 16(b) of the Regulation must be interpreted by national courts. In order that there is an ‘evocation’ of a registered geographical indication, it is required to assess whether, when the average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. Since there is no visual or phonetic similarity between the disputed designation ‘Glen Buchenbach’ and the GI ‘Scotch Whisky’, account must be taken of the conceptual proximity, if any, between both.

For the Scotch Whisky Association, such conceptual proximity could result from the use of the word ‘Glen’, Scottish Gaelic for valley. On the other side, Mr. Klotz who markets the whisky under the designation ‘Glen Buchenbach’, considers that the other elements on the labels of the bottles are enough to establish the German origin of the whisky and avoid any confusion on the part of the consumer (“the label on the whisky bottles in question includes, in addition to a stylised depiction of a hunting horn (Waldhorn in German), the following information: ‘Waldhornbrennerei’ (Waldhorn distillery), ‘Glen Buchenbach’, ‘Swabian Single Malt Whisky’, ‘500 ml’, ‘40% vol’, ‘Deutsches Erzeugnis’ (German product), ‘Hergestellt in den Berglen’ (produced in the Berglen)”).

Such context is not significant for the Court, according to which, whether for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, or for the purpose of establishing that there is a ‘false or misleading indication’, account must not be taken of the context surrounding the disputed element or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.

The Regional Court of Hamburg now has all arguments to rule on the case, or so it seems… But what about you? Does the designation ‘Glen Buchenbach’ make you think of Scotch Whisky?

© INSCRIPTA