On Thursday 7 June, the Court clarified EU law on geographical indications for spirit drinks in the framework of a dispute against the German whisky Glen Buchenbach (case C-44/17).
The word ‘glen’, a word of Gaelic origin, means ‘narrow valley’, and 31 of the 116 distilleries that produce Scotch whisky bear the name of the glen in which they are located. There are also whiskies produced outside Scotland which include the word glen in their name (Glen Breton in Canada, Glendalough in Ireland, Glen Els in Germany).
The Scotch Whisky Association, which promotes the interests of the whisky industry in Scotland, takes the view that the use of the term ‘glen’ for the German whisky in question is liable to mislead consumers as to the origin of the whisky and brought legal proceedings in Germany.
The regional court of Hamburg asked the Court of Justice of the EU whether, with regard to the regulation (110/2008) on the protection of geographical indications, the use of such a name may constitute a ‘indirect commercial use’ or ‘evocation’ of the registered geographical indication Scotch Whisky, or a ‘false or misleading indication’ of the product in question.
In its judgement, the Court takes up the conclusions of the Advocate General (see EUROPE 11968).
The Court states that within the meaning of the regulation (110/2008), in order to establish the existence of an ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it.
Accordingly, it is not enough that the element is liable to evoke in the relevant public some kind of association with the indication or geographical area concerned.
Secondly, the Court holds that the decisive criterion for determining that there is, in this case, an ‘evocation’ of the protected geographical indication Scotch Whisky is whether, when an average European consumer who is reasonably well-informed and reasonably observant and circumspect is confronted with the product under dispute, Glen Buchenbach, the image triggered in his or her mind is that of the product whose indication is protected.
It is the responsibility of the national court to assess this point, taking account of the partial inclusion of a protected geographical indication in the name under dispute, a phonetic and/or visual similarity between this name and the indication or a conceptual proximity between the name of the indication.
There is no need, for the purposes of this assessment, to take account of the context surrounding the disputed element and, in particular, of the fact that it is accompanied by a clarification on the actual origin of the product concerned, the Court adds. (Original version in French by Mathieu Bion)