According to a ruling of the Court of Justice of the European Union (ECJ) from 7 June 2018, an association with a protected indication is not by itself sufficient to infringe the registered geographical indication (Az.: C-44/17).
As in the case of word marks or figurative marks, it is also possible to obtain trade mark protection for geographical indication of origin. Consumers may make certain associations with geographical designations of origin, e.g. regarding the quality of the product. We at the commercial law firm GRP Rainer Rechtsanwälte note that while protection of designations of origin is, for this reason, important to businesses, it is not without limits.
The Court of Justice of the European Union had to rule on whether use of the term “glen” in the case of whisky from a German brewery infringes the registered trade mark “Scotch Whisky”. That is the position of the Scotch Whisky Association. It argued that the term “glen” could give consumers the wrong idea about a connection with the registered geographical indication and thus mislead them as to the origin of the whisky. The Association therefore initially lodged a claim with the Landgericht Hamburg, the Regional Court of Hamburg, which in turn appealed to the ECJ.
The ECJ clarified that “indirect commercial use” of a registered geographical indication requires that the disputed element be used in a form that is identical or phonetically and/or visually similar to this indication. It went on to say that it is not enough that the description might evoke in consumers some kind of association with the registered geographical indication or the relevant geographical area.
Whether the term “glen” alludes to the protected geographical indication was said to depend to a large extent on whether consumers are prompted by this description to make a connection between the product and the protected geographical indication. Consumers would therefore need to be thinking specifically about Scotch Whisky when they have “glen” whisky from the German brewery in front of them. This must now be re-examined by the Landgericht Hamburg in the case in question. The ECJ added that in doing so the context of the disputed element, e.g. the statements on the label regarding the true origin of the product, is not to be taken into account.
Trade mark or copyright infringements can be met with severe penalties. Lawyers who are experienced in the field of intellectual property rights can advise companies when enforcing or fending off claims.