#Evocation #Glen #CJEU: Judgment in Case C-44/17, Scotch Whisky Association v Michael Klotz
On 7 June, the Court of Justice of the European Union (CJEU) published an interesting judgement in Case C-44/17. Following the action initiated in Germany by the Scotch Whisky Association (SWA), the Court of Hamburg had asked the CJEU to interpret EU legislation on GIs spirit drinks (Regulation (EC) No 110/2008), in particular with respect to the depth of “evocation”. The case opposes the SWA and a distillery located in Germany, which produces and markets whisky under the designation “Glen Buchenbach”. The product’s label also indicates “German product”. The SWA considers that the use of the term “Glen”, in connection with whisky, infringes the GI “Scotch Whisky” as it is liable to cause consumers to make an inappropriate connection to the GI. “Glen” in fact is widely used in Scotland to refer to “valley” and is an element of the trade mark of Scotch Whisky producers.
With respect to the concept of evocation, which is a powerful tool to protect GIs against the exploitation of their reputation and other practices which aim at establishing a connection between the products sold and GIs, the main elements of the judgement are:
- The “conceptual” proximity between a GI and the contested name can result in an evocation. This has to be evaluated by national courts, taking into account the fact that an average European consumer, who is reasonably well informed and observant and circumspect, when confronted with the name at issue, the image triggered in his mind is that of the product whose indication is protected. This is the first case which puts it beyond doubt that evocation can exist even where the name at issue is not similar phonetically or visually to the GI.
- The indication of the true origin of the good at issue does not exclude automatically the evocation of a GI.
As a result, in the present case, the German court will have to determine whether an average European consumer thinks directly about the GI “Scotch Whisky” when he is confronted with a comparable product bearing the name “Glen” (“Glen Buchenbach” whisky).
#UKIPO #Evocation: trademark application “Pawsecco” rejected
On May 21, the United Kingdom Intellectual Property Office (UKIPO) refused the trademark application “Pawsecco” filed by the company “Woof and Brew Limited” for its line of still wine for dogs and cats. The Consorzio Prosecco had opposed such application relying on both the PDO Prosecco (recognized under EU regulation 1308/2013) and its EU collective trademark.
The protection conferred by the PDO was crucial in this case. The UKIPO in fact considered that the use of the name “Pawsecco” would amount to an evocation of the PDO, as consumers would think of the image of Prosecco even in the absence of a risk of confusion. This decision is interesting because:
- It clarifies once again the relations between GIs and trademarks in the EU (with obligation to protect GIs not only for the EUIPO but also for national trademark offices);
- It confirms “evocation” as a powerful tool for effective GIs protection.
It is worth recalling in this context that since 2015, the UK is the largest export market for Prosecco (in 2017, the UK export represented 34,7% of the total Prosecco export).
See the UKIPO decision