Origin matters: The power of geographical indications for alcoholic beverages
Some categories of goods, such as agricultural produce, foods and spirits, are valued by customers primarily because of the exceptional natural conditions of their town, region or country of origin, or because of their traditional production methods. Authorised producers use geographical indications for their products to underline this uniqueness.
Geographical indications identify goods as having high quality, a good reputation, or other characteristics attributed to their geographic origin. A geographical indication undoubtedly increases the appeal of the product and distinguishes it from others offered on the market. Thanks to the specifics of geographical indications, we know for example that a spirit labelled as “Scotch whisky” must have been produced in Scotland according to the process strictly defined in the Scotch Whisky Regulations 2009. And when we see a bottle of spirits labelled “Polish Cherry” we can expect it to be a cordial produced in Poland from a mixture of fortified cherry juice and a tincture of cherries grown only in Poland, macerated in spirit, and natural almond extract. Alcohol products may bear a given geographical indication if they meet the defined requirements for origin, including the raw materials and technologies used.
As shown by these examples, in the case of alcoholic beverages geographical indications speak volumes about a product, and a reference to them increases the appeal of the product. Consequently, some producers attempt to refer to their goods in a way that is similar to a geographical indication even when the product does not necessarily have anything in common with the region in question. Some also try to register trademarks containing or alluding to geographical indications. But that can be a risky manoeuvre.
Geographical indications are subject to legal protection, as provided for in 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. Annex III to the regulation contains a list of spirit drinks covered by the protection of geographical indications. These include for example Rhum de la Martinique (France), Scotch Whisky (Scotland), Cognac and Marc de Champagne (France), Svensk Vodka (Sweden), as well as Polish Vodka/Polska Wódka and Polish Cherry. Issues of geographical indications for alcoholic beverages are also governed by national regulations—in Poland the Act on Spirit Drinks and Registration and Protection of Geographical Indications for Spirit Drinks of 18 October 2006.
Enterprises should bear in mind that protection of geographical indications is quite broad. They are protected not only in the case of direct or indirect use to refer to unprotected products, but also with respect to many other practices such as improper exploitation or allusion, as well as false or misleading indications of place of origin, properties or characteristics that could create a false impression as to the origin of the product. Thus it would be prohibited, for example, to refer to a product as “Scottish-type whisky” or “Scotch whisky flavour drink” when it is not whisky from Scotland produced in compliance with the Scotch Whisky Regulations 2009.
Does Glen Buchenbach evoke Scotch whisky?
Practice shows that cases of unlawful evocation of a geographical origin in trademarks are quite common. A recent example is Scotch Whisky Association v Klotz (Case C-44/17), which reached the Court of Justice pursuant to a request for a preliminary ruling from the regional court in Hamburg.
At an online shop, Michael Klotz sold a whisky called “Glen Buchenbach” produced at the Waldhorn distillery in the German town of Berglen, in the Buchenbach Valley of the Swabia region, in the state of Baden-Württemberg. The Scotch Whisky Association alleged that use of the name “Glen Buchenbach” for whisky violated Regulation 110/2008, because the name “Glen” evokes in the relevant public an association with Scotland and the geographical indication Scotch Whisky. The regulation protects geographical indications not only against direct or indirect commercial use for comparable products, but also “misuse, imitation or evocation” by products not covered by the protection.
Thus the German court wondered whether the name “Glen Buchenbach” evokes the geographical indication “Scotch Whisky.” The national court asked, “Does an ‘evocation’ of a registered geographical indication [under Art. 16(b) of Regulation 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?”
The Advocate General S. ØE submitted his opinion in February 2018, and the Court of Justice issued a judgment on 7 June 2018. The court found that under its existing case law, the “evocation” referred to in the regulation applies to a situation where “the term used to designate a product incorporates part of a protected geographical indication, so that when the consumer is confronted with the name of the product in question, the image triggered in his mind is that of the product whose indication is protected.” This “evocation” does not necessarily require a phonetic or visual similarity or immediate association, nor does it require any partial incorporation of the protected indication. The criterion of “conceptual proximity” between terms emanating from different languages must also be considered when it could trigger an image in the consumer’s mind of the product whose geographical indication is protected.
It should be stressed that whether there is an impermissible evocation of a protected indication in the disputed name of a spirit drink should be determined apart from additional designations, such as a statement of the true origin of the product, on the label or packaging. Stating the true origin does not exclude a finding that the disputed name is misleading and constitutes an impermissible “evocation” of the protected indication.
It is not easy to determine whether the brand “Glen Buchenbach” alludes to Scotch whisky. The Advocate General suggested in his opinion that in deciding the case, it should be taken into account that “glen” is a Gaelic word meaning “narrow valley,” and 4.5% of German whisky drinkers associate the word “glen” with Scotch whisky or something Scottish. However, the Court of Justice did not address this line of reasoning in its judgment. It stated that “the referring court is required to determine whether, when the average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication 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.”
Undoubtedly the choice of the name “Glen Buchenbach” for a German whisky was no accident, but the ultimate decision on whether the name evokes the geographical indication “Scotch Whisky” will be determined by the German court.
The highland rogue’s tipple? Rob Roy whisky
Instances involving infringement of geographical indications have also come up before the Polish courts.
In the 1990s a dispute arose over the use of the name “Rob Roy” for whisky produced in Poland. In the judgment of 26 February 1996 (Case IX GC 543/95, unpublished), the Gdańsk Province Court held, “It was deceptive to place on the label the name of a Scottish hero or other figure somehow associated with Scotland. Branding whisky produced outside Scotland with the name or sobriquet of such a person, such as Rob Roy Whisky, clearly if indirectly suggests Scotland as the place of origin of the spirit.” The court also took into consideration that the name Scotch Whisky enjoyed special protection in the European Union due to its excellent reputation all over the world, including in Poland.
O Lord!
The database at the Polish Patent Office still contains trademarks filed for whisky containing such elements as the traditional British knightly title “Sir” or noble title “Lord” combined with British-sounding names or for example the names of Scottish mountains. Consumers might be inclined to link such trademarks and the products bearing them with Scotland, and thus could be misled if such a brand were used for whisky from somewhere other than Scotland—for example, Polish whisky. Recently, after intervention by producers and exporters of Scotch whisky, the proprietors of several such marks, filed for whisky without indicating whether the whisky is from Scotland, have decided to modify the list of goods covered by the trademark, while specifying that in the case of whisky, the trademarks are intended for Scotch whisky, thus eliminating any doubts as to the origin of the products marketed under those brands.
Undertakings perceiving possible economic advantages from linking their products with certain geographic origins may be tempted to allude to specific registered geographical indications. This is a short-sighted strategy, however, and the consequences can be serious. One consequence is the risk of having to pay damages for committing an act of unfair competition and infringing the rights to a protected geographical indication. If the undertaking attempts to register a trademark violating the rights to a protected geographical indication, it should expect the authorised entities to take formal measures to oppose the trademark registration.
It should also be borne in mind that marketing of spirits by a person not authorised to use a protected geographical indication is an offence punishable by up to two years in prison (Art. 41 of the Act on Spirit Drinks and Registration and Protection of Geographical Indications for Spirit Drinks of 18 October 2006).
Dr Monika A. Górska, legal adviser, Marzena Białasik-Kendzior, Intellectual Property practice, Wardyński & Partners
