The matter at hand

An individual named Michael Klotz markets a whisky under the designation ‘Glen Buchenbach’. The whisky is produced by the Waldhorn distillery in Berglen in the Buchenbach valley in Germany. The label of the whisky explains that the whisky designates from the Waldhorn distillery and that it is a German product produced in Berglen.

The Scotch Whisky Association, which promotes the interests of the whisky industry in Scotland brought an action before the Landgericht Hamburg (the Regional Court in Hamburg), taking the position that the designation ‘Glen Buchenbach’ evokes an association with the geographical indication ‘Scotch Whisky’, because the designation ‘Glen’ is very widely used in Scotland instead of the word ‘valley’ and, in particular, as an element of trade marks used for Scottish whiskies.

In this context, the Landgericht Hamburg referred preliminary questions to the ECJ regarding the interpretation of the Spirits Regulation, more specifically the protection this regulation offers against:

• 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;

• 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;

• 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 judgment of the ECJ

The ECJ first of all holds that it is apparent from the wording, context and objective of rule (a) that for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, “the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto” (paragraph 39).

Secondly, the ECJ answers that rule (b) means that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court must determine whether, when the average consumer is confronted with the disputed designation, “the image triggered directly in his mind is that of the product whose geographical indication is protected” (paragraph 56).  In the absence of any phonetic and/or visual similarity between the indications and any partial incorporation of the registered indication (which is not required under this rule), account must be taken “of the conceptual proximity, if any, between the designation and the indication” (paragraph 56). The ECJ also explains that for the purpose of that determination “account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned” (paragraph 60).

Consequently, in the present case, the national court will have to determine whether an average European consumer thinks directly of the protected geographical indication ‘Scotch Whisky’ when he is confronted with a whisky bottle bearing the designation ‘Glen’, taking into account the conceptual proximity between the two indications, says the ECJ in paragraph 52. That ‘Glen Buchenbach’ evokes some kind of association with ‘Scotch Whisky’ or the geographical area relating thereto is not sufficient “as it does not establish a sufficiently clear and direct link between that element and the indication concerned” (paragraph 53).

Lastly, as regards rule (c), the ECJ holds that, for the purpose of establishing that there is a ‘false or misleading indication’, account is not to be taken of the context in which the disputed element is used. Attainment of the Regulation’s objectives (in particular the protection of registered geographical indications in the interests of consumers and of economic operators bearing higher costs in order to guarantee the products’ quality) would be jeopardised if that protection could be restricted by the fact that additional information is found alongside an indication which is false or misleading (paragraphs 69 – 71).