„Does ‘Glen’ make you think of Scottish whisky? Advocate General Saugmandsgaard Øe does not think so” – Beitrag von RA Mirko Brüß für „TheIPKat”

In seinem neuesten Beitrag analysiert RA Mirko Brüß die Schlussanträge des EuGH-Generalanwalts in einem Verfahren der schottischen Whiskyindustrie gegen den deutschen Hersteller eines Whiskys mit der Bezeichnung „Glen Buchenbach“.

Die Scotch Whisky Association ist der Ansicht, die Bezeichnung „Glen“ führe bei Käufern zu einer Assoziation mit schottischem Whisky, was einen Verstoß gegen Art. 16 der Spirituosenverordnung darstelle. Der Generalanwalt kommt zu dem Ergebnis, dass „Glen“ zwar Assoziationen zu Whisky erzeugen könne, aber nicht zwingend zu schottischem Whisky, so dass kein Rechtsverstoß vorläge. 

Eine Entscheidung des EuGH liegt noch nicht vor.


The IPKat vom 15.03.2018

‘Glen Buchenbach’ is the name of a whisky that is produced by the Waldhorn distillery in Berglen, situated in the Buchenbach valley in Swabia (Baden-Württemberg, Germany). The Scotch Whisky Association from Scotland (TSWA) took offence at the name and sued Mr. Klotz, the producer of the Whisky, in Hamburg, Germany. TSWA claims that use of the term ‘Glen’ infringes the registered geographical indication ‘Scotch Whisky’ and asserted a breach of Art. 16 (a) – (c) of the Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.

Article 16 protects all the geographical indications registered in Annex III against practices liable to mislead the consumer as to the true origin of such products.

The District Court of Hamburg saw itself confronted with an interesting situation: whereas past cases that were decided by the CJEU involved product names or descriptions that included (part of) the protected geographical indication, in this case there is no similarity, whether phonetic or visual, between the disputed designation (‘Glen’) and the protected geographical indication (‘Scotch Whisky’). Yet, the disputed designation is allegedly liable to cause consumers to make an inappropriate connection with the protected geographical indication.

This led the Hamburg court to stay the proceedings and to refer the following questions to the CJEU for a preliminary ruling (C-44/17):

(1)      Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of Regulation No 110/2008 require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(2)      Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of Regulation No 110/2008 require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(3)      When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of Regulation No 110/2008, does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’

On February 22nd, Advocate General Saugmandsgaard Øe (AG) delivered his Opinion in the case. He concluded that the prohibition under Article 16 would be “unlikely to apply in circumstances such as those in the main proceedings, in so far as the disputed term, ‘Glen’, does not have a sufficiently clear and direct link with the protected geographical indication in question, ‘Scotch Whisky’, or with the country with which it is associated — the ‘United Kingdom (Scotland)’ — in order for that term to constitute a ‘false or misleading indication … liable to convey a false impression as to its origin’”.

To get to this result, Saugmandsgaard Øe carefully analyzed Article 16 (a) – (c), looking at the wording, the context surrounding the provision at issue and the objectives of Regulation No 110/2008.

An important finding from the Opinion is that Article 16 “sets out a graduated list of prohibited acts, in which paragraph (c) is very different to the two previous paragraphs. Whereas Article 16(a) is limited to use of the protected geographical indication and paragraph (b) to misuse, imitation or evocation, paragraph (c) widens the scope of the protection to include ‘indications’ (information provided to consumers) on the description, presentation or labelling of the product concerned which, while not actually evoking the protected geographical indication, are ‘false or misleading’ as regards the links between the product concerned and that indication”.

The first question

Looking at paragraph (a), the AG concluded that the use of the term ‘Glen’ does not amount to a direct or indirect commercial use of the registered geographical indication ‘Scotch Whisky’. TSWA claimed the norm should be interpreted in the sense that ‘indirect’ commercial use of a registered geographical indication would not require use to be made of that indication itself. The AG disagreed, first looking at the wording of paragraph (a) and stating it is apparent that the word ‘use’ in paragraph (a) requires, by definition, that the protected geographical indication itself be used, which was not the case here. This result was reinforced by the context surrounding the provision at issue. If paragraph (a) was to be interpreted in such a broad manner, there would be little room for application of paragraph (b) which applies to ‘misuse, imitation or evocation’.

In conclusion, the AG proposed that the answer to the first part of the first question should be that Article 16(a) must be interpreted as meaning that ‘indirect … use’ of a registered geographical indication, prohibited by that provision, requires the disputed designation to be identical or phonetically and/or visually similar to the indication in question.

The second question

Next, the AG turned to Article 16(b) and the concept of ‘evocation’ of a registered geographical indication. The referring court had observed that the CJEU has consistently interpreted the concept of ‘evocation’ as meaning that it ‘covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product the image triggered in his mind is that of the product whose designation is protected’. However, no such rulings exist that clarify whether a phonetic and/or visual similarity between the signs at issue is a necessary requirement for the existence of evocation to be established. […]

 

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