On Thursday 22 February, the advocate general stated his position regarding the interpretation of EU law on the geographical indications of spirit drinks in the context of litigation against the German whisky, Glen Buchenbach (Case C-44/17).
Of Gaelic origin, the term “glen” means a narrow valley and 31 of the 116 distilleries producing whisky of Scottish origin are called after the name of the “glen” in which they are located. There are also whiskies produced outside Scotland that use the term “glen” in their denomination (e.g. Glen Breton in Canada, Glendalough in Ireland and Glen Els in Germany).
The Scotch Whisky Association, which promotes the interests of the Scottish whisky industry, considers that the use of the term “glen” for German whisky is likely to be misleading for consumers regarding the origin of the whisky in question. It has therefore referred the matter to the German courts.
The Regional Court in Hamburg asks the EU Court of Justice whether, given the regulation (110/2008) on the protection of geographical indications, the use of such a name is likely to constitute “indirect use” or “evocation” of the registered geographical indication Scotch Whisky as well as “false or misleading indication” of a kind that gives the wrong impression “as to the true origin of such products”.
In today’s conclusions, Advocate General Henrik Saugmandsgaard Oe observes that this is the first time that the Court has been invited to specify to what extent a denomination which presents no similarity, either phonetic or visual, to a protected geographical indication can nonetheless be detrimental to the latter.
Firstly, Saugmandsgaard Oe considers that a registered geographical indication is not the subject of prohibited “indirect use” unless the denomination in dispute is identical to the indication concerned or phonetically and/or visually similar. Hence, it is not enough for the element in dispute to evoke in the relevant consumers’ minds an association with the registered geographical indication or with the geographical area concerned.
Secondly, the advocate general considers that the element of denomination in dispute should not necessarily present a phonetic or visual similarity with the registered geographical indication to constitute unlawful “evocation” of the indication. On the other hand, it is not sufficient for the disputed element to awaken, in the relevant consumers’ minds, an association of ideas with the protected indication or with the geographical area concerned.
If there is no phonetic or visual similarity, it is then appropriate to take into account the existing conceptual proximity, where necessary, between the indication concerned and the element in dispute, as long as that proximity is of a kind that makes the relevant consumer think, as an image of reference, of the product which benefits from the indication.
Thus, it will be up to Landgericht Hamburg alone to verify whether, in the case in hand, an average European consumer directly evokes Scotch Whisky when in the presence of a comparable product bearing the designation Glen.
The advocate general adds that, in order to characterise the existence of prohibited “evocation”, one must not take into consideration additional information appearing alongside the element in dispute in the designation, presentation or labelling of the product concerned, notably those referring to the true origin of the product.
It is of no matter, in this context, whether the element in dispute corresponds to the name of the company and/or the place of the product where it is made, as the German producer asserts that the name Glen Buchenbach constitutes a play on words formed from the place of origin of the whisky in question (Berglen) and the name of the local river (Buchenbach).
Finally, Saugmandsgaard Oe considers that, in order to embody the existence of a “false or misleading indication of a kind to create an erroneous impression of origin” of the product concerned, neither is it necessary to take into consideration the additional information appearing alongside the element in dispute in the designation, presentation or labelling of the product, notably those which refer to the true origin of the product. (Original version in French by Mathieu Bion)