A German distillery sells Swabian single malt whisky. A name that could only evoke associations with Scottish origin, or so argues the Scotch whisky Association before the ECJ.
Among other things, Scotland delights visitors with its dreamlike landscape, which is characterized mainly by rough mountains (Bens) and the wide valleys (Glens) between them. The northernmost part of the UK is also internationally known for its first-class scotch whisky. Many of the local distilleries themselves and often their products are named after the particular place name or the characteristics of the region in which they are burned or burned, such as Glengoyne, Glenfiddich or Glen Moray.
A Swabian distillery, which has brought the “Glen Buchenbach” on the market, has been sued by the Scotch whisky Association (SWA) before the Regional Court (LG) Hamburg . According to the association, the use of the term ‘glen’ arouses in consumers the incorrect and therefore misleading idea that the German product from Swabia may have something to do with Scotland, more specifically with the registered geographical indication ‘Sotch whisky’. And regardless of the fact that the German distillery on the label of Glen Buchenbach points out that this is a German product, according to the SWA.
The LG Hamburg, which was dealing with the case, finally sent a preliminary ruling to the European Court of Justice (ECJ) , which replied on Thursday. In order to determine whether there is an “allusion” that is inadmissible under EU law, the LG Hamburg must now examine whether a consumer is thinking directly of Scotch whisky, if he has a comparable product called Glen in front of him, the Luxembourg judges.
“Something with Scotland” is not enough
The ECJ makes clear from the outset that a mere association of whatever nature with the protected information is not sufficient to violate the registered geographical indication. So it may not be enough if the customer only thinks of the beautiful, colorful heather-covered Scottish Highlands with the product name Glen Buchenbach. Even if some whisky distillery has settled there.
The ECJ’s reasoning: It is clear from the wording, context and purpose of the relevant Regulation (EC) 110/2008 that “Indirect commercial use” of a claim is only valid if the contested component is used in a form consistent with that claim identical or sonically / visually similar. Therefore, a consumer must think for an injury specifically to Scotch whisky. Therefore, a further association does not allow the ECJ to do so.
Then, the ECJ gives the LG Hamburg the benchmark for assessing whether the Glen Buchenbach may remain a “Glen”. Whether there is an “allusion” to the registered indication of Scotch whisky depends, in the view of the Luxembourg judges, on what a “normally informed, reasonably attentive and reasonable European average consumer” thinks. So whether he mentions the Glen Buchenbach with Scottish whisky.
The label is not interested
However, the Luxembourg judges also decided that the LG Hamburg may not take into account when assessing the question that the Swabian distillery identifies its product as German on the label. Such information should not lead to a weakening of the protection afforded by the Regulation. This is what counts in Hamburg alone on the initial question:
Does the average European consumer think of Scotch whisky when he has a comparable product called “Glen”?
Attorney Dr. Sven J. Mühlberger from MS Concept Rechtsanwälte represents the Swabian distillery. He is satisfied with Thursday’s decision: “The verdict today is clearly in the right direction, and the Court has expressly emphasized that the word ‘Glen’ does not suffice to associate Scotch whisky with a violation of the geographical indication.”
He says it is a precedent. Therefore, he does not expect a decision of the LG Hamburg before 2020: “It is about the fundamental question: Is the awakening of mere associations to a protected indication of origin for a violation of law? We mean no – and now know the European Court of Justice behind us.”