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Protection for indications of geographical origins: A case of Scottish Glens and German Whisky

24 July 2018

On 7 June 2018 in the case of Scotch Whisky Association v Michael Klotz[1], the Court of Justice of the European Union (CJEU) was asked to determine whether use of the term “Glen” by Michael Klotz, a producer of a German whisky called “Glen Buchenbach”, indirectly and unlawfully infringed the Protected Geographical Indication (PGI) “Scotch Whisky” on the basis that the average consumer would associate the term “Glen” with “Scotch Whisky” and assume that Glen Buchenbach was a Scotch Whisky.

The term “Scotch Whisky” has been a PGI in the UK and EU since 2008. This means that goods can only be sold under the term “Scotch Whisky” if they were produced in a Scottish distillery and have an ABV of at least 40%. In this case, the Scotch Whisky Association (SWA) argued that use of the term “Glen”, a Gaelic word which compromises part of the name of a number of Scottish whiskies such as Glenfiddich and GlenDronach, was in itself evocative of Scotland and Scotch Whisky.

SWA relied on Article 16(a-c) of European Regulation No. 110/2008 which states that:

“Geographical indications shall be protect against:

(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 insofar as such use exploits the reputation of the registered geographical indication;

(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;

(c) any 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.”[2]

Essentially, the provision ensures that parties are prohibited from using or registering marks which infringe either directly or indirectly a spirit drink registered under a PGI.

In the case of SWA v Michael Klotz, the CJEU decided to pass the final judgement back to the District Court of Hamburg. However, the CJEU did provide interesting guidance on the issue finding that it was not sufficient that the word “Glen” may evoke association with Scotland on the whole. In order for the PGI to be indirectly infringed, there would have needed to be an evocation which directly associated the term “Glen” with the PGI “Scotch Whisky”.

This case has therefore raised a number of questions concerning PGIs and to what extent they can be directly or indirectly infringed. It will be interesting to see how the CJEUs guidance is applied by the District Court of Hamburg and what effect it bears on the fate of Glen Buchenbach.

 

Fiona McBride
Trade Mark group

If you require further information on anything covered in this briefing, please contact Fiona McBride (fmcbride@withersrogers.com; +441179253030) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

[1] Scotch Whisky Association v Michael Klotz C-44/17, Court of Justice of the European Union judgement, 7 June 2018

[2] Article 6 (a-c) of REGULATION (EC) No 110/2008 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks

© Withers & Rogers LLP, July 2018