EU protection of geographical indications – does GLEN BUCHENBACH imply Scotch Whisky?

The CJEU has recently provided guidance on the extent of protection granted to geographical indications (‘GI’) under EU law.

The Scotch Whisky Association (‘SWA’) brought a case in the German courts against an online distributor of a whisky produced in Germany. SWA claimed that use of ‘Glen Buchenbach’ on the spirit in question infringed the GI for “Scotch Whisky” – a term reserved in the EU for use solely on whisky produced in Scotland. In particular, SWA objected to the use of the word “Glen”, a Gaelic term for ‘deep valley’, on the basis that use of this word implied that the product was of Scottish origin. SWA argued that the protection of a GI extends to any reference that alludes to the geographical origin of the indication (here Scotland) even though the label of the Glen Buchenbach bottle also clearly stated that the whisky was produced in the Waldhorn Distillery, Germany.

In its reference to the CJEU, the German Court asked a number of questions relating to the extent of protection granted to geographical indications, and in particular the interpretation of the provisions of Article 16 of Regulation 110/2008.  The German Court requested clarification on whether ‘indirect use’ or ‘evocation’ of a protected GI could be established in situations where the use complained of was neither identical nor similar to the registered GI. In addition, they asked for an indication of the factors to be taken into account when deciding whether a protected GI is infringed.

Under the first ground, the CJEU held that indirect commercial use must be in a form that is either identical, or phonetically and visually similar, to the registered GI – it is not sufficient for the complained of terms to imply an association with a registered GI. By this reasoning, use of ‘Glen’ is not sufficiently close to constitute indirect use of “Scotch Whisky”.

In instances where holders of protected GIs cannot rely on “direct” or “indirect” use, however, the Regulation also provides an additional ground of protection against “evocation” of the GI as well as false and misleading indications. Under this ground, and for the purposes of establishing ‘evocation’, the Court held that whilst there is no requirement of similarity, the visual and phonetic closeness of the two terms may be a relevant factor. In addition, the Court confirmed the importance of establishing both a direct link between the two terms and a level of conceptual proximity. In this case the question to be asked was whether use of  ‘Glen’ or ‘Glen Buchenbach’ triggers the average consumer to think of “Scotch Whisky”.

Finally, the Court was asked to consider the scope of the third ground: a ‘false or misleading indication’. Referring back to the intention of the EU legislature in the creation of this provision, the Court played down the importance of the particular context in which the disputed term is used. Instead, it was found to be immaterial that the bottle prominently displayed elements in addition to Glen (including the name of the distillery which produced the drink).

Whilst holders of registered GIs will be pleased to note the Court’s comments relating to the irrelevance of the context of use, the judgment does give a relatively narrow construction of “evocation” requiring a direct link and conceptual proximity, which is likely to limit the scope of protection afforded to GIs. Exactly how the test for infringement will be applied to these specific facts remains undecided – the case has now been referred back to the German National Court for its decision on the facts.

Authored by Danielle Jeeves