Scotch whisky ruling clarifies scope of geographical indication protections

The judgment issued by the Court of Justice of the EU (CJEU) represented a mixed result for the Scotch Whisky Association (SWA), according to George Campbell of Pinsent Masons, the law firm behind Out-Law, who is a legal expert in the food and drinks sector.

Campbell said: "Elements of this decision are helpful to Scotch whisky brand owners while other elements are less helpful. However, the decision does clarify that the inclusion of information about the true origin of a product is not a defence against infringement of the geographical indication – this will make it harder for potential infringers to take advantage of the indicator of origin but avoid liability by providing other information in its branding or labelling."

The SWA has challenged the right of Michael Klotz, an online whisky distributor in Germany, to sell the product under the brand name 'Glen Buchenbach'. It has claimed use of the word 'Glen' in the brand name is a breach of the geographical indication protections that apply to 'Scotch whisky' under EU law since 'Glen' is a term used locally in Scotland instead of the word 'valley'.

The Regional Court in Hamburg which is considering the case asked the CJEU to help it interpret EU laws before issuing its judgment.

The EU laws in question place restrictions on the sale or production of certain goods that are synonymous with particular areas of Europe. It means that Scotch whisky, Parma ham and champagne, among other products with a protected geographic indication, can only be referred to as such if they are produced in accordance with strict rules and within certain areas.

In relation to Scotch whisky, the geographical indication protections are set out in the EU regulation on geographical indications of spirit drinks.

That regulation protects registered geographical indications from "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 in so far as such use exploits the reputation of the registered geographical indication".

The regulation also provides protection against "any misuse, imitation or evocation" as well as "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", and "any other practice liable to mislead the consumer as to the true origin of the product".

The CJEU held that for a brand to be said to be an indirect commercial use of a protected geographical indication for a spirit drink, the brand would have to be "used in a form that is either identical to that indication or phonetically and/or visually similar to it". This element of the decision is unhelpful to Scotch whisky brand owners.

However, it also said a brand's use could be said to evoke a protected geographical indication in some cases even if there is no phonetic or visual similarity between the disputed brand and the protected geographical indication.

The CJEU said it is for national courts to determine whether disputed brand names evoke images of the protected geographical indication. The courts should put themselves in the position of the average European consumer of the goods at issue. That consumer is to be considered to be reasonably well informed and reasonably observant and circumspect.

However, for the geographical indication protections to apply in relation to 'evocation', the courts must consider that an image of the product protected by the geographical indication would be "triggered directly" in the mind of the average consumer upon seeing the name of the disputed brand, the CJEU said.

The CJEU said: "Identifying phonetic and visual similarity between the disputed designation and the protected geographical indication is … not an essential condition for establishing that there is an ‘evocation’ … It is only one of the factors to be taken into account by the national court when it assesses whether, when the consumer is confronted with the name of the product concerned, the image triggered in his mind is that of the product whose geographical indication is protected. Accordingly, it is possible that an ‘evocation’ may be found to exist even in the absence of such similarity."

The CJEU said that courts must also, where appropriate, "take account of the criterion of ‘conceptual proximity’ between terms emanating from different languages" in assessing evocation. This is because proximity "may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected, when he is confronted with a similar product bearing the disputed name", it said.

According to the CJEU, it is immaterial whether the disputed brand is "corresponds to the name of the undertaking and/or the place where the product is manufactured". Klotz has claimed that the brand 'Glen Buchenbach’ is "a play on words consisting of the name of the place of origin of the drink at issue in the main proceedings (Berglen) and the name of a local river (‘Buchenbach’)", the ruling said.

The CJEU also considered whether brand owners that include information about the true origin of the product they are selling have a defence against the use of brands that otherwise make a false or misleading indication of the provenance, origin, nature or essential qualities ... of the product. It ruled they cannot.