21/05/2024-Further consolidation of the evocation case law

In 2020, the Scotch Whisky Association (SWA) had opposed the registration of an application filed at the Denmark IP Office (DKPTO) for the trademark “JOHN A. McLAREN DISTILLERS 1831” in class 33 (alcoholic beverages except beers and alcoholic preparations for making beverages; this includes whisky, without limitation as to its origin and characteristics).

The SWA opposition was based on the fact that the mark was likely to mislead consumers (unless used on Scotch Whisky) and to evoke the GI, protected in the EU in accordance with Regulation 2019/787. In this respect, it was argued that the prefix ‘Mc’ in the name ‘McLaren’ corresponds to the one of other Scotch whisky distilleries (‘McLaren’ is a Scottish surname and clan name). The SWA presented a consumer survey to back up this argument and mentioned the European Court of Justice’s Glen Buchenbach decision (C-44/17) in support of the opposition.

As the opposition was unsuccessful, the SWA filed an appeal. The Board of Appeal reversed the DKPTO’s decision, finding that the trademark application at issue may evoke the GI Scotch Whisky in consumers’ minds if used with whisky. As a result, it granted the registration of the mark only for the limited list of goods: “whisky; whisky-based preparations for preparing drinks; all the aforementioned goods in compliance with the geographical indication “SCOTCH WHISKY”. The translation of the DKPTO Board of Appeal decision can be found here.

This case is important because it consolidate the case law on evocation and shows once again the important role consumer surveys can play to support IP protection when evidence of public perception is required.

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