“Too much of anything is bad, but too much good whiskey is barely enough.” Mark Twain
Judgment of the European Court of Justice (Fifth Chamber) of 7 June 2018.
Scotch Whisky Association v Michael Klotz
Request for a preliminary ruling from the Landgericht Hamburg.
Reference for a preliminary ruling — Protection of geographical indications of spirit drinks — Regulation (EC) No 110/2008 — Article 16(a) to (c) — Annex III –– Registered geographical indication ‘Scotch Whisky’ — Whisky produced in Germany and marketed under the designation ‘Glen Buchenbach’.
Germany takes second place to Scotland in its number of whisky distilleries. There are around 29,000 fruit and grain distilleries throughout the country, of which 250 produce whisky. About 130 of these operate in Germany expressly under the name of whisky distilleries (https://www.deutschland.de/en/topic/life/whisky-from-germany). One such, the Waldhorn distillery in Berglen, produces a Swabian single malt whisky called Glen Buchenbach which can be purchased online from their website at https://waldhornbrennerei.de/de/
“Glen” is the Gaelic term for a deep valley, or “Tal” in German. Ironically the artist who painted “The Monarch of the Glen,” Edwin Landseer, was an Englishman and the word may have its origins in Irish as well as Scottish Gaelic. However the Scotch Whisky Association (“SWA”) has for the past 5 years been seeking an order in the German courts to prevent Mr Klotz from continuing to market Glen Buchenbach on the basis that use of the name “Glen” is liable to infringe Article 16 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.
Article 16 protects all the geographical indications registered in Annex III to Regulation No 110/2008 against practices liable to mislead the consumer as to the true origin of such products. Mr Klotz could have called his product “Tal Buchenbach” but given that the entirety of his site is indicative of an exclusively German product and given that the distillery itself is (as stated clearly on the label) situated in Berglen could it be argued that the mere use of the world “Glen” in connection with whisky (bearing in mind in addition that “Glen” is used in connection with Canadian and Irish whiskies) might lead the consumer to believe that the whisky was in reality a Scotch Whisky?
Article 16 “Protection of Geographical indications” provides as follows:
Without prejudice to Article 10, 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;|
|(d)||any other practice liable to mislead the consumer as to the true origin of the product.|
Annex III entitled “Geographical indications” states that “Scotch Whisky” has been registered as a geographical indication relating to the second category of goods, namely “Whisky/Whiskey” with “the United Kingdom (Scotland)” listed as the country of origin.
The SWA submitted that a geographical indication registered for a spirit drink is protected not only against the use of such an indication but also against any reference which suggests the geographical origin of that indication. Therefore because the designation “Glen” is widely used in Scotland instead of the word “valley” and in particular as part of the trademark in the names of a number of Scottish whiskies it evokes in the public conscience an association with Scotland and Scotch Whisky even though other information available on the label specifies that the product is of German origin.
The Landgericht Hamburg (the Hamburg Regional Court) requested a preliminary ruling from the European Court of Justice on 19 January 2017 in respect of four questions although in this note I will refer only to the first two questions.
The Advocate General H. Saugmandsgaard Øe in his opinion promulgated on 22 February 2018 noted that this was the first time that the Court had been invited to specify to what extent a designation without any similarity, either phonetic or visual, with a protected geographical indication, may nevertheless infringe that indication.
In relation to the first question he stated that a registered geographical indication (in this case “Scotch Whisky”) is only subject to prohibited ‘indirect use’ if the disputed denomination is identical or phonetically and/or visually similar to the indication in question. Therefore, it is not sufficient that that designation is liable to evoke in the relevant public some kind of association of ideas with the indication or the relevant geographical area.
In relation to the second question the Advocate General stated that in the absence of phonetic and visual similarity, it is necessary to take account of the conceptual proximity existing, if it be the case, between the indication in question and the disputed designation, in so far as that proximity is of such a nature as to lead the consumer to have in mind, as reference image, the product whose indication is protected. It is therefore solely for the Landgericht Hamburg to determine whether, in the present case, when the average European consumer is confronted with a comparable product bearing the designation ‘Glen’, the image triggered directly in his mind is that of ‘Scotch Whisky’
In what is a clear blow to the SWA the ECJ followed the opinion of the Advocate General and held that the word “use” in Article 16(a) requires by definition that the sign at issue makes use of the protected geographical indication itself in the form in which that indication was registered or at least in a form with such close links to it in visual and/or phonetic terms that the sign at issue cannot be dissociated from it.
The Court held that the Article 16(a) protects a sign which is either identical to the registered geographical intention or at least in a form which is phonetically or visually similar. Bearing in mind the necessity to distinguish point (a) from points (b) to (d) of Article 16, the Court found that point (a) would be devoid of practical effect if it were given a broader interpretation, namely that the sign evokes in the relevant public some kind of association of ideas with a registered geographical indication or the geographical area related to it. The Court then went on to consider the objective pursued by the registration of geographical indications namely to allow the identification of spirit drinks as originating from a specific territory in situations where a given quality, reputation or other characteristic of those drinks is essentially attributable to that geographical origin (my italics). In other words Article 16 is intended to prevent producers from making commercial use of a geographical indication in respect of products not covered by the registration in particular with the aim of taking unfair advantage of that geographical indication. The fact that the word “Glen” might evoke in the relevant public some kind of association with a registered indication or geographical area was not sufficient to invoke Article 16(a).
The Court then went on to consider Article 16(b) and again they followed the opinion of the Advocate General that in assessing whether there is an evocation within the meaning of Article 16(b) it is not sufficient that the term used to designate the product at issue incorporates part of a protected geographical indication but the national court must determine whether, when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose geographical indication is protected.
In other words the national court (in this case the Landgericht Hamburg) must ask itself whether an average European consumer who is reasonably well-informed and reasonably observant and circumspect thinks directly of the protected geographical indication, namely Scotch Whisky, when he is confronted with a comparable product bearing as in this case the name “Glen.” At the same time the national court must not take account of the context surrounding the disputed element or in particular that the element is accompanied by an indication of the true origin of the product concerned.
Therefore, ignoring the labelling on Michael Klotz’s bottle, would a well-informed European consumer believe that a bottle of whisky purchased in Germany bearing the name Glen Buchenbach was in fact Scotch Whisky? I expect that Mr Klotz is already drinking his toast to victory.
 See Bureau national interprofessionel du Cognac C-4/10 and C-27/10, EU:C:2011:484 judgments of 14 July 2011 and Comite Interprofessionnel du Vin de Champagne, C-393/16, EU:C:2017:991