The Scotch Whisky Association (SWA) has encountered a setback in its attempt to bar non-Scottish distilleries from using the word ‘Glen’ in their product names. On referral from Landgericht Hamburg (Hamburg’s Regional Court), the EC Advocate General (AG) delivered an opinion in February in the context of a dispute over the Germany whisky brand name ‘Glen Buchenbach’. Novagraaf’s Vanessa Harrow examines the implications.
‘Scotch Whisky’ is a registered geographical indication (GI), and according to SWA, the use of the word ‘Glen’ misleads consumers as to the origin of the goods in question, despite other aspects of the product’s label indicating the product as being of German origin.
The question referred to the CJEU by Landgericht Hamburg was whether the use of a term, such as ‘Glen’, constitutes an ‘indirect use’ or ‘evocation’ of a protected GI, and what should be taken into account when assessing whether use falls foul of EU legislation on the protection of registered GIs applicable to spirit drinks (Regulation (EC) No 110/2008).
‘Glen’ is a Gaelic word for ‘a narrow valley’, and 31 of the 116 distilleries producing Scotch Whisky are named after the glen in which they are located. However, there are other whisky brands produced outside Scotland, which also include ‘Glen’ in their names (and which have survived legal challenges by the SWA).
In the February opinion, the AG clarified that to be prohibited for ‘indirect use’, the disputed term needed to be identical or phonetically and/or visually similar to the registered GI. That it simply suggests in the relevant public some sort of link to the geographical area is not sufficient therefore. ‘Indirect use’ was interpreted by the AG to mean use in supplementary marketing/information sources, as opposed to ‘direct use’ which involves the mark being affixed directly to the product or packaging in question. On the question of ‘evocation’, the AG stated that, in the absence of partial incorporation or phonetic and visual similarity, conceptual proximity needs to be taken into account; in other words, on seeing a comparable product with the designation ‘Glen’, would the designation trigger an image of ‘Scotch Whisky’ in the mind of the average European consumer.
Likelihood of success
According to the AG’s opinion, the threshold for evocation does not go so far as to require a likelihood of confusion, but it does require more than mere association; i.e. there must be at least conceptual proximity. The assessment of conceptual proximity is made by reference to the perception of the average European consumer, who is reasonably well informed, observant and circumspect.
Whilst not binding, the AG has also offered an opinion on the factual circumstances of the SWA and Glen Buchenbach dispute and this casts serious doubts on SWA’s case. The word ‘Glen’ appears to be too far removed, phonetically, visually and conceptually, from the concept of ‘Scotch Whisky’ to justify its prohibition under any of the GI grounds. However, the parties must await the final judgement of the CJEU and the German courts to know whether use of Glen Buchenbach for whisky produced in German can be prohibited on the basis of the GI ‘Scotch Whisky’.
Taking advice in the earlier stages of your brand development, including conducting trademark searching to check the availability of a chosen mark, enable companies to assess the likelihood of dispute before a new product or service is marketed. Launching with a brand name that is already in use in a marketplace or potentially breaches registered GI protection can impact a business’s ability to market its product, even if it is ultimately successful in any legal challenge brought against it. Worse, if it is not successful, it could have to develop a new name from scratch at short notice, halt its production process, and even remove and destroy those products that have already been produced. Find out more about trademark searching.