Certain geographical indications (“GIs“) are protected by EU Regulation 110/2008/EC, which aims to ensure that use of such indications is to identify a spirit drink as originating within a certain territory where a given characteristic is attributable to its geographical origin. In the case of The Scotch Whisky Association, The Registered Office v Michael Klotz, the Advocate General has provided guidance, for the first time, on the extent to which a protected geographical indication (being ‘Scotch Whisky’) with no similarity, either phonetic or visual, with a designation (being the term ‘Glen’), may nevertheless be infringed by that indication.

The Advocate General’s opinion states that the use of ‘Glen Buchenbach’ on the label of a whisky produced by a distillery located in Germany is: (1) not unlawfully ‘indirectly using’ ‘Scotch Whisky’ unless ‘Glen Buchenbach’ is identically or phonetically and/ or visually similar to ‘Scotch Whisky’; and (2) not unlawfully evoking ‘Scotch Whisky’ unless, when the average European consumer is confronted with the term ‘Glen’, the image triggered in his mind is that of ‘Scotch Whisky’.

The Scotch Whisky Association had taken issue with Mr Michael Koltz’s use of the term ‘Glen’ alongside the word ‘Buchenach’ (a valley) on the labels of the German-produced whisky. The whisky labels included the address in Germany where the whisky was produced. However, such additional information is not necessarily to be taken into account when looking to establish the existence of a prohibited ‘evocation’, nor a ‘false or misleading indication’, the Advocate- General opined.

The Court of Justice will deliver its judgment later in the year hopefully, but the Advocate General has set the bar high for infringement of a GI.