European Court of Justice: ECJ recently provided useful guidelines pertaining to violation of registered geographical indication (GI) violation. The case concerned Michael Klotz who marketed whiskey under the designation ‘Glen Buchenbach’, which was produced by a distillery located in the Buchenbach valley in Swabia (Germany). The Scotch Whisky Association (SWA) took the view that use of the term ‘Glen’ for the German whisky in question infringes the registered geographical indication ‘Scotch Whisky’. They claimed that despite the other information on the label, the term ‘Glen’ is allegedly liable to cause consumers to make an inappropriate connection to the registered GI and, thus, to mislead them. The SWA, therefore, brought an action before the Regional Court, Hamburg, Germany. Regional Court, in turn, asked ECJ to interpret the EU Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.
Firstly, Court held that for the purpose of establishing that there is ‘indirect commercial use’ of a registered GI under Article 16(a) of Regulation (EC) No 110/2008, the disputed element must be shown to have been used in a form that is either identical to that indication or phonetically and/or visually similar to it. Hence, according to Court, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto.
Secondly, the Court opined that under Article 16(b) the decisive criterion for finding there to be an ‘evocation’ of the protected GI is whether, when an average consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the name of the product concerned, the image triggered in his mind is that of the product whose indication is protected and this determined, taking into account any phonetic and/or visual similarity or any conceptual proximity between protected GI and the disputed designation. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication. In such determination, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.
Therefore, Court held that under Article 16(c) for the purpose of establishing that there is a ‘false or misleading indication’, account is not to be taken of the context in which the disputed element is used as Regulation’s objectives would be jeopardised if that GI protection could be restricted by the fact that additional information is found alongside an indication which is false or misleading. Now the referring court would decide the case based on the guidelines elucidated by ECJ. [Scotch Whisky Association v. Michael Klotz, [2018] Bus LR 1466, order dated 07-06-2018]
