Special agricultural products can obtain special protection in the EU. And this affects a German whisky producer who wanted to use the word “Glen” as part of the name of his whisky.
Read the article from Jyllands-posten, Wednesday 15 August 2018 here.
In a new ruling, the EU Court of Justice has considered the possibility that a German-produced whisky called “Glen Buchenbach” may infringe the protected designation of origin for Scotch Whisky. EU law provides protection for registered product names for agricultural products, wine and spirits to ensure that consumers obtain the quality, special characteristics or method of production for which the product is known. Examples of protected designations of origin include Feta, Danablu and Scotch Whisky. The rules contain protection against competitors’ direct or indirect use of the designation, as well as suggestions or other practices that may mislead consumers as to the origin of the goods.
The case stems from a dispute in Germany between the Scotch Whisky Association and Michael Klotz as to whether the use of the word “Glen” could constitute an infringement of Scotch Whisky, even though the product indicated that the whisky was produced in Germany. The Scotch Whisky Association took the view that the marketing of this whisky with the designation “Glen” was contrary to EU law provisions on the protection of registered geographical indications. The Scotch Whisky Association’s purpose is, inter alia, to protect trade in Scotch Whisky. Under EU law, the term “Scotch Whisky” is protected as a term that may only be used for whisky produced in Scotland. On that basis, the Scotch Whisky Association brought an action before the Landgericht Hamburg (the regional court of first instance in Hamburg, Germany) seeking an order to stop the marketing of the whisky under the designation “Glen”, as a registered geographical indication is protected against any “indication” that suggests the geographical origin of that designation. “Glen” means valley in Scottish and is widely used in Scotland, where the word is, inter alia, a fixed component in names of Scotch whisky. For this reason, the Scotch Whisky Association took the view that consumers would associate the word “Glen” with Scotch whisky. Michael Klotz, however, did not believe that “Glen” gives an association to Scotch whisky, as it is a common word that is part of the name of countless towns, rivers and valleys outside Scotland. In order to decide the case, the Landgericht Hamburg decided to refer a number of questions to the EU Court of Justice on the scope of protection under the rules for registered geographical indications for spirits.
Initially, the EU Court of Justice noted that, when interpreting EU law rules, account must be taken, in addition to the wording, of the context in which the provision is included, as well as the purpose of the provision. The provisions on registered geographical indications for spirits are intended to achieve a high level of consumer protection and to ensure the EU law principles of market transparency and fair competition. The rationale is that the quality, reputation or other characteristics of the spirit can be attributed to its geographical origin, which is why it is necessary to protect that designation of origin.
Firstly, the EU Court of Justice was asked to rule on what is meant by an “indirect commercial use of a registered geographical indication”. The EU Court of Justice noted initially that there could only be “use” of a registered designation, “Scotch Whisky”, if there was a use that was identical to the designation, or that was visually or phonetically very similar to the registered designation. In order for there to be a phonetic similarity between the designations used, the sound of the words must resemble each other. In addition, a distinction must be made between direct use on the product itself or its packaging, and indirect use in supplementary marketing or information documents. However, the EU Court of Justice held that, regardless of whether there was direct or indirect use, the designation should be used in a form that is identical to it, or phonetically or visually similar to it. It was not sufficient for the purposes of this provision that an association was aroused in the relevant customer base.
Secondly, the EU Court of Justice was asked to rule on the interpretation of the term “suggestion”, as EU law also protects the designation “Scotch Whisky” against any suggestion, such as the use of “Glen”. The term “suggestion” covers situations where a protected geographical indication is used in such a way that the consumer is led to think of the product to which the designation applies. The EU Court of Justice noted in this connection that it is for the national court to assess how the consumer is led to think of the product in question. The EU Court of Justice clarified in this connection that the assessment should take into account “the perception of a reasonably well-informed and reasonably observant and circumspect European average consumer”. Furthermore, the EU Court of Justice clarified that, in relation to this assessment, it was also relevant to examine whether the suggestion presents phonetic or visual similarity, although this is not a condition for there to be a suggestion. It was also relevant to examine whether there was a conceptual similarity between the expressions in different languages, as this could also lead the consumer to think of the product which is protected by the designation of origin. However, the EU Court of Justice held that, on the other hand, no account should be taken of whether the disputed designation was accompanied by a more detailed indication of the product’s/goods’ actual origin or in what context the designation was included.
Thirdly, the EU Court of Justice was asked to rule on whether account should be taken of the context in which the potentially infringing component is used in connection with the assessment of whether there was a “false or misleading indication” of the product’s origin, characteristics, etc. According to the provision, all information in connection with the designation, presentation or labelling of the product in question is covered, which, in the form of a text, a picture or another form, can provide information about the product’s origin, origin, nature and main characteristics. The assessment of whether there is a “false or misleading indication” must be made by the national court, but the EU Court of Justice clarified that there could still be an infringement even if another origin was indicated on the product.
In summary, for all 3 categories of protection of geographical designations of origin, however, the indication of the actual origin of the goods is not sufficient to ensure that one does not infringe a protected designation. Although the EU Court of Justice does not rule on whether “Glen” constituted an infringement of the designation “Scotch Whisky”, the EU Court of Justice provides several significant interpretative contributions to how EU law should be interpreted and applied by national courts in connection with disputes of this nature. For this very reason, the judgment is relevant for anyone who either wishes to market a product where there are similar products that have obtained a protected designation, and who needs to know the scope of their protection.