(CN) – The Scotch Whisky Association has a steep climb to show that the German company Glen Buchenbach is trying to pass its whiskey off as a spirit from the highlands, an EU magistrate said Thursday.
The association brought the underlying challenge in Hamburg to stop Michael Klotz from using the Gaelic word “glen” in the designation for his German whisky made in Swabia’s Buchenbach valley.
Glen is Gaelic for narrow valley, and Advocate General Henrik Saugmandsgaard Øe notes in his opinion that 31 out of 116 distilleries producing Scotch whisky are named after the glen in which they are located. But Øe noted that “there are also whiskies produced outside of Scotland which have ‘glen’ as part of their name, such as the whiskies ‘Glen Breton’, ‘Glendalough’ and ‘Glen Els’, which come from Canada, Ireland and Germany respectively.”
The Scotch Whisky Association says that Klotz’s other references to his product’s German origin are not enough to counter the association with Scotland and Scotch whisky that is achieved with the designation “Glen.”
When Klotz moved to dismiss, the Hamburg Regional Court sought insight from Europe’s highest court, the European Court of Justice.
Øe’s opinion Thursday is not binding, but it will be given weight when the Luxembourg-based court begins deliberations.
In a statement accompanying the opinion, Øe began by noting that it is unprecedented for the court to “specify to what extent a designation without any similarity, either phonetic or visual, with a protected geographical indication, may nevertheless infringe that indication.”
The opinion states that “it is not sufficient that the disputed designation is liable to evoke in the relevant public some kind of association with the registered geographical indication or the geographical area relating thereto.”
As for the prohibition against evoking a registered geographical indication, Øe said a phonetic and visual similarity between the disputed designation and the indication in question is not required.
Looking at the facts of this case, however, Øe called it uncertain that “there is sufficient conceptual proximity between the protected geographical indication and the disputed designation for the latter to constitute an ‘evocation’ of the protected geographical indication.”
“In that regard, it is solely for the referring court to determine whether, when the average European consumer is confronted with a comparable product bearing the designation ‘Glen’, the image triggered directly in his mind is that of ‘Scotch whisky’, notwithstanding the fact that his choice of whisky is undoubtedly not entirely fortuitous,” the opinion states. “Even if the referring court were to find that consumers systematically associate the word ‘Glen’ with whisky, the required close connection to Scottish whisky, and thus the necessary proximity to the indication ‘Scotch whisky’, may be lacking.”