In a decision that extends the law of geographical indications into the territory of the UK tort of passing off, the District Court of Hamburg (the ‘Court’) has prohibited the use of ‘Glen’ in the name of a whisky that did not originate from Scotland on the basis of the geographical indication protection associated with ‘Scotch Whisky’ .
The Court held that the whisky produced in Germany may not be called ‘Glen Buchenbach’ as it infringes the registered geographical indication (‘GI’) of ‘Scotch Whisky’. The Scotch Whisky Association (‘SWA’) sought an order that an online distributor of whisky cease to market ‘Glen Buchenbach’ whisky, since such whisky was produced by a distillery in Germany and was not ‘Scotch Whisky’. Although said whisky was produced in a valley, the SWA claimed that the use of the designation ‘Glen Buchenbach’ infringed the registered GI ‘Scotch Whisky’ under Articles 16(a), (b) and (c) of Regulation No 110/2008 (the “Regulation”).
The Court stayed the proceedings and referred to the CJEU three questions on the interpretation of Articles 16(a)-(c) of the Regulation, seeking clarification regarding the connection that must be present between a registered GI and a designation with no phonetic or visual similarity to such GI, in order for there to be infringement.
The Court distilled the CJEU’s responses and held there was no infringement of Article 16(a) of the Regulation, which is concerned with direct or indirect commercial use insofar as such use exploits the reputation of the registered geographical indication. The Court’s finding here was to be expected since the CJEU held that, for infringement under Article 16(a), the sign at issue must use the registered GI in at least a form that is phonetically or visually highly similar. ‘Glen Buchenbach’ clearly did not use ‘Scotch Whisky’.
The Court also found no infringement under Article 16(b) of the Regulation (which protects GIs against any misuse, imitation or evocation), stating that there was no evocation between the disputed designation and protected GI as there was no conceptual proximity. The Court applied the CJEU’s findings that it must be essential for consumers to establish a link between the term ‘Glen Buchenbach’ and ‘Scotch Whisky’, taking into account any conceptual proximity between the two.
However, the Court held that there was infringement under Article 16(c) of the Regulation, which protects GIs against any false or misleading indication. The CJEU held that this Article affords extensive protection for registered GIs and that no account is to be taken of the context in which the disputed element is used. In its assessment, the Court did not therefore take into account the additional information on the whisky’s bottle which stated that it was a produce of Germany, and held that the use of ‘Glen’ to name whisky that was not produced in Scotland was a ‘misleading indication’. The average European consumer (who is reasonably well informed and reasonably observant and circumspect) could be led to believe that the whisky was ‘Scotch Whisky’ and therefore liable to convey a false impression as to the whisky’s origin under Article 16(c). It is currently unknown as to whether this decision will be appealed; the defendant might decide that it is worth a shot.