Does the word ‘Glen’ on a whiskey product make EU consumers think it is Scotch? The CJEU requires that national courts determine whether there is sufficient Conceptual Proximity for a Protected Geographical Indication (PGI) to be infringed
On June 7th, 2018, the Court of Justice of the European Union issued a preliminary ruling attempting to clarify the EU rules that protect registered geographical indications applicable to spirit drinks. The preliminary ruling responded to a request by the Landgericht Hamburg regional court in Germany. In the German court, the Scotch Whisky Association contended that Mr. Michael Klotz, an online distributor of whiskey, should not be able to market a German whiskey under the designation “Glen Buchenbach” because that designation allegedly infringes SCOTCH WHISKY as a protected geographical indication.
The Court interpreted Article 16 of Regulation No. 110/2008, entitled “Protection of Geographical Indications”, which in relevant part, provides that geographical indications are protected against, inter alia: “(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 in so far as such use exploits the reputation of the registered geographical indication” and “(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…”
The Court explained that in the absence of a defendant’s use in whole or in part of the identical designation or a phonetically and/or visually similar term, it is not sufficient that an element is liable to evoke in the relevant public some kind of association with the protected indication. In those circumstances, courts must consider the conceptual proximity between the terms used and the protected geographical indication. It is not sufficient that the word ‘Glen’ referring to a narrow valley, as often found in the Scottish Highlands, merely evokes an association with Scotch Whisky or Scotland. Instead, the correct question is 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”. Accordingly, the average EU consumer who sees a bottle of whiskey bearing the designation ‘Glen’ would essentially think it was Scotch Whisky. Other indicia revealing that the whiskey was indeed made in Germany would not protect against a violation, if sufficient conceptual proximity is found.