GERMANY: Court Finds Designation ‘Glen Els’ Misleading for German Whisky

As previously reported in the October 1, 2018, edition of the INTA Bulletin, in its Glen Buchenbach judgment of June 7, 2018, the Court of Justice of the European Union (CJEU) (Case C-44/17) gave guidance on the interpretation of Article 16(a)‒(c) of the Spirit Drinks Regulation (European Commission) No. 110/2008, but left the decision to the national courts as to whether the requirements were met. The Regional Court of Hamburg subsequently held that the use of “Glen” for the German whisky “Glen Buchenbach” was misleading under Article 16(c).

On September 19, 2019 (Case 3 U 262/16), the Higher Regional Court of Hamburg decided upon a case concerning the designation “The Glen Els” for a German whisky from the German Harz region. In this case, the court additionally applied Article 16(b) by ruling that the use of “Glen” in the name of a German whisky, despite the reference to its German origin, is also an “unlawful evocation” to the protected geographical indication (GI) “Scotch Whisky.” The national court applied the CJEU’s guidance that it must be determined whether an average European consumer would think directly of the protected GI “Scotch Whisky” when confronted with a comparable product bearing the disputed designation-in this case, “Glen.” The decisive criterion is whether the image triggered directly in the consumer’s mind is that of the product whose GI is protected. Unlike the use of a GI in accordance with Article 16(a) of the Spirit Drinks Regulation, “evocation” does not require that the protected designation itself be used.

The plaintiff, Scotch Whisky Association, had provided evidence showing that in the European Union the only “Glen” whiskies on offer with a significant market share were Scotch Whiskies, and market surveys supported that the relevant public believed “Glen” to be a component of brand designations of Scotch Whiskies. On this basis, the Higher Regional Court held that from the point of view of the average European consumer, the indications “Glen” or “The Glen Els” bring about a direct association with goods that bear the protected GI “Scotch Whisky” if this indication is attached to the whisky. In addition, according to the provisions of the Spirit Drinks Regulation, the associated deception cannot be removed through an explanation regarding the origin of the product. The court did not permit appeal to the German Federal Supreme Court.

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