Case 44/17 – The Scottish Whiskey Association

By April 17, 2017No Category

Keywords: labelling, protection of geographic origin; ‘indirect use’ 

Applicant: The Scotch Whiskey Association (United Kingdom)

Defendant: X, Berglen (Germany)

Referring court: Landgericht Hamburg (Germany)

Date of filing of the reference to the ECJ: January 27, 2017

Date of referral decision: January 19, 2017

Deadline for Member States to submit their written observations:  May 6, 2017

Subject:

– Regulation (EC) No 110/2008 of 15 January 2008 on the definition, description, presentation, labeling and protection of geographical indications of spirit drinks and repealing Council Regulation (EC) No 1576/89.. Council;

– Regulation (EU) No 1151/2012 of the European Parliament and the Council of November 21, 2012 on quality schemes for agricultural products and foodstuffs.

Decision of the court requesting a preliminary ruling from the ECJ

In the matter of

The Scotch Whiskey Association, The Registered Office, [] Edinburgh [], UK, the applicant

versus

[] Berglen, defendant –

1. [..].

2. Under Article 267 of the Treaty on the Functioning of the European Union, the following questions shall be referred to the Court of Justice on the interpretation of Article 16 of Regulation (EC) No 110/2008 of 15 January 2008 concerning the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89:

1. For there to be “indirect commercial use for […] products” within the meaning of Article 16 (a) of Regulation (EC) No 110/2008, must the registered geographical indication be used in an identical or similar, from a phonetic and/or optical perspective, form, or is it sufficient that the component of the sign at hand evokes an association by the target audience with the registered geographical indication or the geographical area?

  • In the event the latter suffices: is it relevant for the investigation as to whether there is “indirect commercial use”, in which other indications the component is embedded, or can those other listings not prevent indirect use of the registered geographical indication, not even when the item in question is accompanied by an indication of the actual origin of the product?

2. For there to be an allusion (“representation”) to a registered geographical indication within the meaning of Article 16 (b) of Regulation (EC) No 110/2008, is it required that there is a phonetic and/or optical similarity between the registered geographical indication and the component of the sign, or does it suffice that the component somehow triggers an association with the registered geographical indication or geographical area within the targeted audience?

  • In the event that the latter suffices: is it relevant for the investigation into whether there is an allusion, in which other indications the embedded component of the sign is embedded, or can those other indications not prevent unlawful allusion to the item in question, not even when the item in question is accompanied by an indication of the actual origin of the product?

3. In determining whether there is an “other incorrect or misleading indication” within the meaning of Article 16 (c) of Regulation (EC) No 110/2008, is it relevant in what other indications the component has been embedded, or can these other indications not prevent misleading representations, not even if the item in question is accompanied by an indication of the actual origin of the product?

Justification of the referring court for its request for a preliminary ruling:

I. The applicant opposes the use of the term “Glen Buchenbach” for whiskey which is not Scotch Whiskey. The applicant is a Scottish whiskey-based organization established in Scotland, one of the main objectives of which is to protect the Scottish whiskey trade both in Scotland and abroad. Defendant has a website where he sells a single malt whiskey under the name “Glen Buchenbach” []. The whiskey is produced by the Waldhornbrennerei in the town of Berglen in Buchenbachtal, Germany. [Or. 3]

The label of the whiskey bottle lists []:

“Waldhornbrennerei

Glen Buchenbach

Swabian Single Malt Whiskey

500 ml

40% vol

Deutsches Erzeugnis

Reinstate it Berglen “.

The indication “Scotch Whiskey” is listed as a geographical indication for whiskey from the United Kingdom (Scotland) in Annex III, point 2 of Regulation No 110/2008. “Glen” comes from the Gaelic language and means “narrow valley”. 31 of the 116 distilleries of Scotch whiskey are named after the glen where they are located []. Appendix K 20 shows 114 labels of scotch whiskey containing the “Glen” component. Of the 210 whiskeys won at the World Wisky Awards in the year 2015, there were 99 Scotch Whiskeys, of which 35 had a name comprising the reference “Glen” []. In addition, there are also “Glendalough” whiskeys from Ireland, “Glen Breton” from Canada and “Glen Els” from Germany.

According to Appendix K 3, in Germany in the year 2013, 1 835 000 9-liter barrels of  Scotch Whiskey have been soldd. That’s about 43% of total whiskey sales. 13 brands with the component “Glen” are listed. Those brands represented a market share of approximately 7.3% of the sold quantities of Scotch Whiskey. In comparison, for German whiskey, there are no significant sales.

The applicant observes that, according to a consumer survey by the Pflüger Rechtsforschung GmbH in 2014, 4.5% of the whiskey drinkers/buyers associated “Glen” with Scotch whiskey or something Scottish, and, in conjunction with whiskey, 16.2% had an association with Scottish whiskey or something Scottish. In response to the question of whether the indication in conjunction with whiskey, indicated a particular region, 33.8% of whiskey drinkers/buyers had named Scotland and Highlands respectively.

According to the applicant, the defendant ‘Glen Buchenbach’ acts in breach of Article 16 of Regulation No 110/2008. It clearly follows from that provision that the geographical indication for spirits is protected against any use indicating the geographical origin, including names and images that would be associated with the geographical indication, and not only the indication of the geographical origin itself .

There is, firstly, an indirect commercial use of the geographical indication within the meaning of Article 16 (a) of Regulation No 11/2008. Secondly, the term “Glen Buchenbach” refers to “Scotch Whiskey” as defined in Article 16 (b) of Regulation No 11/2008. Finally, in accordance with Article 16 (c) of Regulation No 11/2008, “Scotch Whiskey” also provides protection against all other incorrect or misleading indications of the origin of the product.

The term “Glen” creates an association for the target audience with Scotland and Scotch Whiskey. In conjunction with whiskey, “Glen” is a synonym for “Scotch” and “Scottish” respectively. The term “Glen” is in Germany equally known for Scottish distillery art and high quality whiskeys as the “Scotch Whiskey” itself.

The applicant notes that the addition of “Buchenbach” does not remove confusion to the public, as [] there are also Scottish whiskeys with such additions, such as “Glen Darbach”, “Glenlanarch”, “GlenDronach” “Glen Garioch”, “Glenmorangie” , “Glenglassaugh” and “Glenallachie”. Furthermore, the first component, “Glen”, gives the entire sign its English nature.

In addition, in the cases of Article 16 (a) to (c) of Regulation No 110/2008, a delocalizing indication indicating the actual origin of the product is irrelevant. In particular, Article 16 (c) of Regulation No 110/2008 does not require that the full presentation of the product be examined in order to determine whether a misleading indication – like, “Glen” – may give rise to an incorrect impression of origin. Rather, the provision only requires that a single component of the indicator may give the wrong impression. Otherwise, it would have been provided that an incorrect designation is permissible, provided that the actual origin is added.

The applicant claims:

to order the defendant not to trade, manufacture, bottle, sell and/or to advertise and/or to have designate, manufacture, bottle or sell or advertise in the Federal Republic of Germany a whiskey which is not Scotch Whiskey, under the designation “Glen Buchenbach.”

The defendant advances to reject the claim.

Defendant notes that the term “Glen Buchenbach” is a word play by a combination of the place of origin Berglen and the river Buchenbach. The term “Glen” is a common word in English. The public does not recognize Scottish origin. The word comes from the Irish Gaelic and means a valley in that language as well. It is therefore not a sign of a Scottish origin.  There are also the “Old Glenmore” whiskeys from Kentucky and “Glenmore” from Ireland. The fact that according to the public survey [], 33.8% of whiskey drinkers/buyers associate “Glen” with Scotland, can be explained by the fact that Scotland is a major whiskey producer. In that respect, the survey is unusable. It should have been asked first, without any connection with whiskey, whether “Glen” calls for an association with a particular region.

II. The outcome of the appeal depends on the question of how Article 16 (1) (a) to (c) of Regulation No 110/2008 must be interpreted. If the defendant has acted in breach of this rule, the applicant may claim under Paragraph 135 (1) of the law on the protection of marks and other distinguishing marks (Gesetz über den Schutz von Marken und Sonstigen Kennzeichen), by analogy or in any event pursuant to § 3, § 3a and §8 (1) of the  (Law on unfair competition) [Gesetz gegen den unlauteren Wettbewerb].

The question is, therefore, whether the registered geographical indication “Scotch Whiskey” may be harmed by the use of the “Glen” component within the meaning of Article 16 of Regulation No 110/2008.

  1. Article 16 (a) of Regulation No 110/2008 refers to “indirect commercial use” of a registered geographical indication for spirits.

According to one of the views expressed in the literature on Article 13 of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality arrangements for agricultural products and foodstuffs, “direct use” is the use of the protected geographical indication of the product and “indirect use” another act, such as use in advertising or enclosures []. According to another view, “direct use” is used on the product or on its packaging, in advertising or as product name, whereas “indirect use” by referring to the protected name (“tastes like …”). [].

If these views are correct, indirect use would also be required for the geographical indication to be used in identical or, in any event, from a phonetic and/or optical viewpoint, similar form. In that interpretation, the Court would consider Article 16 (a) of Regulation No 110/2008 irrelevant, since ‘Glen’ and ‘Scotch Whiskey’ are neither identical nor comparable. This interpretation, however, does not appear to be compelling. It is conceivable that the provision is to be interpreted as meaning that it is sufficient for “indirect use”, if the object in question triggers any association with the registered geographical indication or geographical area in the target audience. There is apparently no case-law of the Court of Justice about this specific interpretation question. The Court of Justice has merely stated that Article 16 (a) to (d) of Regulation No 110/2008 refers to different cases where a product is explicitly or implicitly referred to as a geographical indication in circumstances where either the public may be misled or at least can be brought to make an association with regard to the origin of the product, or the market party is unlawfully able to benefit from the reputation of the relevant geographical indication (judgment of 14 July 2011, Bureau national interprofessionnel Du Cognac, C-4/10 and C-27/10, EU: C: 2011: 484, point 46).

In case it suffices under Article 16 (a) of Regulation No 110/2008, that the component concerned merely triggers associations, it then raises the question whether that component – in this case “Glen”, is to be considered in isolation or to be considered taking into account the other entries in which the component is embedded. That is in this case irrelevant, because the applicant expressly seeks a ban on “Glen Buchenbach” non scotch whiskey as such, ie, independent of whatever advertisingindications. For example, the ban would also apply to the use on the label described above, which is clarified by additional information that it is a Swabian whiskey and a German product, respectively. Only when Article 16 (a) of Regulation No 110/2008 must be interpreted as meaning that the use of a term which generates similar associations is prohibited in any way, the chamber could issue such a far-reaching prohibition.

  1. Article 16 (b) of Regulation No 110/2008 speaks of “abuse”, “imitation” or “representation” in connection with the registered geographical indication.

With regard to the concept of ‘presentation’ in Article 16 (b) of Regulation No 110/2008 and Article 13 (1) (b) of Regulation No 1151/2012 and the provisions already contained therein, the Court of Justice has consistently held since its judgment of 4 March 1999 in Case C-87/97 Consorzio per la tutela del formaggio Gorgonzola, C-1999/115, paragraph 25:

“The concept of ‘presentation’ in Article 13 (1) (b) of Regulation No 2081/92 covers a situation in which the term used for the designation of a product contains a part of a protected designation, so that when seeing the product’s name,  the product for which that name applies will come to the consumer’s mind.”

Apparently, the Court has not yet ruled whether a phonetic and/or optical similarity of the indications, as in the case of, for example, “Calvados” and “Verlados” in the case in which the judgment of 21 January 2016, Viiniverla Oy, C -75/15, ECLI: EU: C: 2016: 35, was rendered, is a prerequisite for a “representation.” For the present case, however, this is important because there is no such similarity here.

If it is in the context of Article 16 b, Regulation No. 110/2008 sufficient that the component in question triggers only associations with the registered geographical indication of the geographical area, then the question is raised here as well, for the abovementioned reasons, of whether the isolated component is to be taken into account in isolation or whether account should also be taken of the remaining entries in which the component is embedded. It can be argued that, according to Article 16 (b) of Regulation No 110/2008, a representation is expressly inadmissible even when the actual origin of the product is mentioned. On the other hand, this does not have to exclude that in the earlier investigation, in which it must be determined whether or not there is a “representation”, the remaining indications in which the sign is embedded must be taken into consideration.

3. Article 16 (c) of Regulation No 110/2008 regards other incorrect or misleading indications concerning the origin, origin, nature or essential characteristics of the product in the designation, presentation or labeling thereof which could give rise to misunderstandings regarding the origin of the product.

For the purpose of assessing whether an indication of the origin is misleading, this question also concerns whether or not the component “Glen” should be taken into account or that the other indications in which the ingredient is embedded should also be considered. These other entries would in particular include the term “Buchenbach” and delocalizing references on the label. Only when the remaining entries do not play a role, the Chamber will have to decide whether “Glenn” is misleading the target audience. In the event that the remaining entries are to be taken into consideration, the applicant can not find support for its claim in Article 16 (c) of the Regulation, simply because the request is aimed at a ban without regard to any delocalization references.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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