Background

The SWA is an organisation incorporated under Scottish law that is committed to protecting and promoting the trade with Scottish whisky. Its members produce around 95% of Scotch whisky sold worldwide. The Berglen-based distillery being sued distributes – primarily via the Internet – a Swabian whisky under the name “Glen Buchenbach”, which consists of the Gaelic word “glen” (meaning “narrow valley”) and the name of the stream Buchenbach, which runs through the Buchenbach Valley in the town of Berglen. The SWA is of the opinion that the use of the word “glen” is misleading and has therefore filed a cease and desist claim.

Decision

The District Court of Hamburg granted the complaint, arguing that, ultimately, the description “glen” is misleading and that the Plaintiff therefore has a cease and desist claim against the Defendant.

The decision was preceded by a request for a preliminary ruling, in the context of which the District Court of Hamburg submitted to the CJEU several questions regarding the interpretation of art. 16 of Regulation (EC) No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.

Referring to the corresponding judgment of the CJEU of 7 June 2018 (C‑44/17), the District Court of Hamburg initially found that arts. 16 (a) and (b) of Regulation No 110/2008 were not violated. With respect to art. 16 (a), the court stated that the description “glen” is neither a protected geographical indication nor a form that is a phonetically and/or visually very similar to the actually protected geographical indication “Scotch whisky”. With respect to art. 16 (b), the court found that there was no misappropriation or unlawful imitation of, or allusion to, the registered geographical indication. The court held that the fact that the word “glen” can trigger a chain of associations, thus leading the public to assume that the whisky in question is a Scotch whisky, is not sufficient according to the jurisprudence of the CJEU.

However, the District Court held, there is a violation of art. 16 (c) of Regulation No 110/2008, which stipulates a prohibition on any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin. According to the District Court, the use of the term “glen” is moreover liable to convey such a false impression, namely that the whisky with this designation is a Scotch whisky, in the average European consumer, who is the relevant consumer in this respect. The District Court stated that, according to the requirements imposed by the CJEU, the environment in which the disputed component of an indication is used is not in fact to be taken into account. The reason is that if false or misleading information is or becomes permissible in its environment as a result of adding additional correct information, art. 16 (c) would be devoid of is practical effectiveness. Therefore, the misleading nature of the designation in the present case is not precluded by the additions “Swabian Single Malt Whisky”, “Deutsches Erzeugnis” [German product] or the additional sign component “Buchenbach”.

Conclusion

The judgment of the District Court of Hamburg regarding the Swabian product “Glen Buchenbach” was also eagerly awaited by the media. Not entirely surprisingly in view of the preceding preliminary ruling of the CJEU, the District Court ruled in favour of the Scotch Whisky Association. At least from a legal point of view, it is clear that misleading components of product indications cannot be “healed” by adding further components – no matter how evidently correct they may be. However, since there was disagreement throughout the proceedings as to whether or not the assessment of the term “glen” is misleading, we may not have heard the last in the “Glen Buchenbach” case…

Authored by Patrick Fromlowitz

With respect to the CJEU’s ruling of 7 June 2018 (C-44/17), see also the contribution by Anthonia Ghalamkarizadeh and Dr Thomas Richter.