German distiller’s use of Glen is misleading, says court

The Scotch Whisky Association (SWA) has obtained victory in a six-year legal battle to stop a German distillery from selling a whisky called ‘Glen Buchenbach’.

On February 7, the District Court of Hamburg, Germany enjoined German producer Michael Klotz from selling whisky under the designation ‘Glen Buchenbach’.

The SWA, which promotes the interests of the whisky industry from Scotland, had claimed that the use of the word ‘Glen’ infringed article 16(a) to (c) of Regulation No. 110/2008, which protects GI products and prevents them from being exploited.

According to the association, the designation ‘Glen’ is widely used in Scotland as an alternative to the word ‘valley’ and therefore evokes in the relevant public an association with Scotland and Scotch whisky, despite other information on the German bottle indicating Germany as its place of origin.

This argument made it all the way up to the EU’s highest court, after a referral from the German court.

The district court asked the Court of Justice of the European Union (CJEU) to clarify whether the terms “indirect commercial use” and “evocation” require the registered GI to be identical or phonetically and/or visually similar to another product, or whether just an association to the geographical area is enough.

It also asked for clarification when determining whether there is any “false or misleading indication” and if the context in which the disputed element is embedded plays a role.

In June last year, the CJEU concluded that the commercial use of a GI requires actual use of the indication in an identical form or a form that is phonetically and/or visually highly similar.

Regarding the term “evocation”, the CJEU said that the image directly triggered by the product must be that of the GI-protected product. In this case, when consumers read the word ‘Glen’, is Scotch whisky the first image that is triggered?

“If a false or misleading indication could nonetheless be permitted because it is accompanied by additional information relating, in particular, to the true origin of the product concerned, that provision would be deprived of practical effect,” added the court.

Earlier this month, the German court found that there had been no infringement of article 16(a), because ‘Glen Buchenbach’ doesn't make actual use of the registered indication ‘Scotch Whisky’.

However, the court did find that the use of ‘Glen’ on a whisky that isn’t ‘Scotch Whisky’ constitutes a “misleading indication”, which is liable to convey a false impression as to the product’s origin under article 16(c).

Alan Park, SWA Director of Legal Affairs, said:"Our case against Glen Buchenbach presented clear and compelling evidence to the court that 'Glen' is strongly associated with Scotland and Scotch Whisky, and the only reason to use 'Glen' for a German whisky is because of its undoubted association with Scotch Whisky.”

The producer of ‘Glen Buchenbach’ can still appeal against the decision to the Higher Regional Court of Hamburg.