The Scottish Whisky Association (SWA) has recently succeeded in a nine year-long IP dispute with the German Waldhorn distillery of Berglen, Baden-Württemberg. The dispute centred on the German distillery’s labelling of its single malt whisky product, ‘Glen Buchenbach’. Since 2013, the SWA had argued that the use of the word ‘Glen’ on the label of the German distillery’s whisky bottles was both misleading and evocative of Scotch whisky. In upholding a 2019 judgment of the Hamburg Regional Court, the Hanseatic Higher Regional Court in Hamburg agreed with the SWA and rejected the German distilleries appeal. As such, the name of its ‘Glen Buchenbach’ whisky must now be changed as it has been held to amount to an infringement of the Scottish geographical indication (GI) in the word ‘Glen.’
GIs act as an indication of source and are perceived by the public as indicating the origin of particular goods or services. The EU Spirit Drinks Regulation No. 110/2008 provides for GIs for spirit drinks. Article 16 of that Regulation sets out the EU legal position regarding protection against direct or indirect commercial use which exploits a registered GI’s reputation via:
- Imitation or evocation
- False or misleading indications or impressions of origin, or
- Any other practice liable to mislead customers as to the true origin of the product.
The SWA claimed under Article 16 that a GI for a spirit drink is protected not only against the actual use of such an indication, but also references suggesting the origin of that indication. In that regard, it argued that the word ‘Glen’ for valley is used frequently on whisky products.
According to the Oxford English dictionary definition, the word ‘Glen’ means “a deep narrow valley, especially in Scotland or Ireland.” For that reason, it is perhaps unsurprising that many Scotch whiskies feature the word ‘Glen’ in their names such as Glenfiddich or Glenmorangie whisky, for example. Based on the apparent connection between the word ‘Glen’ and Scotch whisky, the SWA argued that the only reason to use the word ‘Glen’ in the name of a German whisky product is because of its undoubted association with Scotch whisky. On the other hand, the German distillery argued that it named its whisky after the Buchenbachtal nature reserve in Germany and that the name ‘Glen Buchenbach’ means ‘Valley Buchenbach’ in English. Also, the German distillery emphasised that the label on each of its bottles identified its whisky product as a “Swabian single-malt whisky” and did not reference Scotland or Scotch whisky.
Despite the fact that the product labelling did indicate that ‘Glen Buchenbach’ is a German product and not a Scottish one, the Hanseatic Higher Regional Court in Hamburg found in favour of the SWA. It held that the German distillery had violated the EU Spirit Drinks Regulation by using the name ‘Glen Buchenbach.’ Ultimately, it held that consumers might mistakenly think of a Scottish whisky when they perceive the name “Glen”, as opposed to a German whisky.
In addition, the decision is consistent with the guidance of the CJEU, which also opined in the case at an earlier point when asked a series of questions prior to the Hamburg Regional Court’s earlier 2019 ruling. The CJEU held that for Article 16(b) of the EU Spirit Drinks Regulation to be triggered, the infringing sign at issue does not need to use the GI such that consumers would associate the sign and the GI. Rather, where a mental image is triggered directly in the mind of the average European consumer who is reasonably well informed and reasonably observant and circumspect, of the product whose indication is protected, this will be sufficient.
The German distillery will now be required to rebrand its ‘Glen Buchenbach’ whisky product. Interestingly, in its decision, the Higher Court in Hamburg emphasised that false or misleading information in the name of the product could not be remedied or compensated for by clarifying information on the product packaging. This decision should serve as a warning to those operating in the food and beverage industries to be mindful of the importance of GIs when selecting names for their products. Words which are suggestive of a GI such that consumers would ‘associate’ the word and the GI, even if the association is only illusory, is all that is required for an infringement to be found. At the same time, the decision will serve as a timely deterrent to those seeking to mislead consumers or who wish to take advantage of the quality reputation of products bearing protected GIs such as Scotch whisky or feta cheese, for example. The principles in the case will apply equally in respect of protecting the Glen designation in respect of Irish whiskey.