EU Ruling May Hinder Scotch Group’s Infringement Claim
An EU magistrate has returned a preliminary ruling in a dispute between the Scotch Whisky Association and a German manufacturer of a spirit called “Glen Buchenbach” that may hinder the trade group’s claim of infringement of the registered geographical term “Scotch Whisky.” Scotch Whisky Ass’n, The Registered Office v. Klotz, No. C-44/17 (opinion of advocate general issued February 22, 2018). The trade group argues that the use of the Gaelic term “Glen” is both an indirect commercial use and an evocation of the registered geographical indication, amounting to a false and misleading indication of origin of the product.
Noting that at least three whiskies produced outside of Scotland include “glen” as part of their names, the magistrate found that “‘Glen’ does not have a sufficiently clear and direct link with the protected geographical indication in question.” The indirect use of a registered geographical indication, the court found, “requires the disputed designation to be identical or phonetically and/or visually similar to the indication in question.” Second, the evocation of such indication “does not necessarily require there to be phonetic and visual similarity.” And finally, the court held that “it is not necessary to take into account of additional information found alongside the sign at issue in the description, presentation or labeling of the product concerned, in particular with regard to its true origin,” to establish the existence of an evocation. “Even if the referring court were to find that consumers systematically associate the word ‘Glen’ with whisky, the required close connection to Scotch whisky, and thus the necessary proximity to the indication ‘Scotch whisky,’ may be lacking,” the court noted.