Yes, it’s German, but is it Scotch?

Examples are Glenlivet, Glenmorangie, Glenfiddich, Glen Grant and Glengoyne. Indeed, on the EU Trade Marks Register alone, there are at least 70 live registrations/designations of trade marks beginning with GLEN specifically protected for whisky.

The fact that so many of these Scotch whisky trade marks begin with GLEN means that, in markets where they are sold side by side, this common GLEN element is “weak” in trade mark terms. Therefore, to successfully argue that the mere inclusion of GLEN in a mark in itself infringes these earlier marks would be challenging. As long ago as 2009 in a decision on an opposition to register GLEN’S as an EU trade mark, the EUIPO (then known as OHIM) held that GLEN was “a commonly used term in trade marks for whisky products” and that its “distinctive character in this sense was not just restricted to the English speaking public but also the European whisky drinkers in general”.

In a recent case (C44/17, Scotch Whisky Association v Michael Klotz), the European Court of Justice (ECJ) responded to a German court’s referral on a case regarding the use of the word GLEN in relation to whisky. The ECJ was not asked to consider whether the use of GLEN infringed any earlier trade mark registrations but rather for guidance on the correct interpretation of the regulation governing protected geographical indications granted by the EU under EU Regulation 110/2008/EC (the Regulation). The Scotch Whisky Association sought to rely on the protected geographical indication successfully obtained by Scotland from the EU authorities for the term “Scotch Whisky” under the Regulation.

A protected geographical indication (PGI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a PGI, a sign must identify a product as originating in a given place. 14 of the 86 PGIs granted to the UK by the EU are for products produced in Scotland.

In this case the industry body, the Scotch Whisky Association, was aggrieved by a German distiller marketing what his bottle label described as a “Swabian Single Malt Whisky” under the mark Glen Buchenbach” (a German registered trade mark). The labelling made no mention of Scotland and indeed expressly described the product as Swabian (meaning from South Western Germany) and as Deutsches Erzeugnis’ (meaning German product). The label further explained that the whisky was produced in the Berglen area near Stuttgart, which might possibly explain how the word Glen came to be used.

The Scotch Whisky Association argued to the Hamburg court that, while the magic word SCOTCH did not appear anywhere on the labelling, the inclusion of the word GLEN in itself offended against the PGI granted to Scotch Whisky under the Regulation.

Article 16 of the Regulation protects an EU PGI from:

1. 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;
2. 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;
3. 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.

The Scotch Whisky Association maintained that Article 16 of the Regulation protected not only against the use of a PGI itself but also against any reference suggesting the geographical origin of that indication. It argued that, because ‘Glen’ is very widely used in Scotland, it evokes in the relevant public an association with Scotland and Scotch Whisky. It submitted that this was “indirect commercial use” of the PGI and/or an “evocation” of the PGI and/or “misleading information.

The Hamburg court referred the matter to the ECJ for a ruling on the correct interpretation of Article 16(a) to (c), in particular as to whether phonetic/visual identity or similarity to the PGI is vital for use of a term to be “indirect commercial use” of a PGI or to constitute an “evocation” of a PGI. It also requested clarification on whether the context in which the disputed element was embedded (including any mention of true origin of the product) should be taken in account when assessing these matters.

The ECJ held that, for there to be “indirect use” of the PGI under Article 16(a), the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Thus, in the German case, the use of GLEN would not be caught under Article 16(a).

For the purpose of finding an ‘evocation’ within the meaning of Article 16(b), the ECJ clarified that there is no requirement for the term used to describe the product to be phonetically or visually identical or similar to the PGI. Accordingly, it is possible that an “evocation” may be found to exist even in the absence of such similarity. The ECJ has however held that the national court must determine not only whether the term used to designate the product concerned incorporates a part of the PGI but also whether, when the consumer is confronted with the name of the product, the image triggered in his/her mind is that of the product the subject of the PGI.

The ECJ directed that when making that assessment, the national court must have in mind the perception of an average European consumer who is reasonably well informed and reasonably observant and circumspect. The ECJ added that it is necessary, where appropriate, to take account of what it described as ‘conceptual proximity’ between terms emanating from different languages, on the basis that such proximity, may also trigger an image in the consumer’s mind which is that of the product whose PGI is protected, when confronted with a similar product bearing the disputed term.

The ECJ then applied its interpretation of Article 16(b) to the case in hand. It guided the German court that it would, taking account, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the PGI or (ii) any partial incorporation of that PGI in GLEN, of conceptual proximity between the PGI and GLEN, have to determine whether a reasonably well informed, observant and circumspect average European consumer would think directly of the PGI for ‘Scotch Whisky’, when confronted with the product bearing the word GLEN.

The ECJ also held that the fact that the true origin of the product is indicated and the context surrounding the disputed term are irrelevant for the purposes of assessing whether the use of the term evokes the PGI. As to the correct interpretation of ‘false or misleading indication’ in Article 16(c), the ECJ held that no account should be taken of the context in which the disputed element is used when assessing the meaning of “false or misleading indication”.

It will be interesting to see how the Hamburg court applies the ECJ guidance. Irrespective of the Hamburg Court’s decision, the case provides useful clarification on the breadth of protection granted to EU PGIs.

Those selling products in food/drink categories for which PGIs have been registered should tread carefully so as not to “evoke” a PGI on their labelling.

Effect of Brexit on EU PGIs

The use and registration of PGIs is regulated by EU law. On leaving the EU provision will need to be made for use and regulation of the 86 PGIs registered by the UK under the Regulation. The UK government announced at an early stage in the preparations for Brexit that it would be establishing its own geographical indication scheme. One of the terms in the published draft withdrawal agreement between the UK and the EU was that all PGIs registered in the EU would be granted the same level of protection in the UK without the need for any re-examination.

In the guidance published by the UK government about the effect of a no-deal Brexit, the plan to set up the UK’s own geographical indication scheme has been repeated, with a promise of a public consultation about this. However, the no-deal guidance points out that, while all 86 PGIs registered by the UK in the EU will automatically be granted PGI status in the UK, this will not apply to PGIs already granted by the EU to other member states. According to the no-deal guidance, those other EU member states will need to apply to the UK for PGI status in the event of a no-deal Brexit.