Does ‘Glen’ = Scotch?

There is a new chapter in the Glen Buchenbach whisky case, discussed in Danielle Jeeves’ article back in August.

To recap, this was a case where a German national court had sought a preliminary ruling from the CJEU (effectively, a request for guidance on interpretation of the law) on a number of issues, prior to deciding the case. In these disputes, it is fairly rare to find out the actual outcome before the national court but thanks to the IPKat and Mirko Brüss, we now know that the Hamburg Court has found the term Glen Buchenbach to be misleading.  This is, however, probably not the final chapter in this story as the case can be appealed further. The case could also be profoundly affected by Brexit, because in the event of no deal being reached between the UK and the rest of the EU, the EU27 countries may not continue to protect UK GI products.

A protected Geographical Indication can be infringed in a number of ways but in this case, the interesting portion of the decision focuses on Article 16 (b) and (c) of Regulation 110/2008 (full text of the Regulation on this link).

The CJEU had ruled that:

  • 1) An ‘evocation’ in the sense of Article 16(b) can occur even when no visual or phonetic similarity between the designation and the indication exists (as was the case here, given that the complained-of designation was Glen Buchenbach). The decisive criterion is whether, when the consumer is confronted with the name of the product, the image triggered directly in his mind is that of the product whose geographical indication is protected, taking account of any conceptual proximity between the name in question and the indication. There may be an ‘evocation’ even if the true origin of the product is indicated.
  • 2) When assessing a ‘false or misleading indication’ under Article 16(c), the context in which the disputed element is used shall not be considered, because if this was to be case, this provision of the law would be deprived of practical effect. This means that it is impossible to cure misleading indications by providing correct information regarding the true origin of the product.

The Hamburg court (taking into account the CJEU’s guidance) held that no evocation had occurred so there was no infringement under Article 16 (b).

However, the Scotch Whisky Association fared better in a consideration of Article 16(c), the court stating that the designation ‘Glen’ gives the average European consumer, who is reasonably well informed and reasonably observant and circumspect the impression that this whisky is a ‘Scotch Whisky’.

I’m an identical twin and one of the key differences between myself and my twin is our liking or otherwise for whisky. I cannot stand it, but sister Liz enjoys a dram, so I was interested in her views on this case. Liz initially thought this decision of the Hamburg court nonsense as her view was that no whisky drinker would associate a whisky sold under such a Germanic name, with Scotch.

The Drinks Business magazine quotes the Scotch Whisky Association’s comments that their case against Glen Buchenbach presented clear and compelling evidence to the court that ‘Glen’ is strongly associated with Scotland and Scotch Whisky, and the only reason to use ‘Glen’ for a German whisky was because of its undoubted association with Scotch Whisky. When I mentioned to Liz that the Hamburg Court had evidence that almost all whiskies which include the word GLEN in their name are Scotch, she conceded that maybe the Hamburg Court had a point, particularly given that not all Scotch drinkers can be expected to have a vast knowledge of the many different distilleries producing whisky today.

This case does show the power of a protected geographical indication and the care that must be taken to avoid the risk of misleading consumers and falling foul of the legislation.

By Cathy Ayers

 

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Posted on: 12th March 2019