Case C-44/17 - Scotch Whisky Association v.

Michael Klotz

First Impression: The case brief looks wordy or heavy with text but at the same time I think I
will appreciate the details put into this brief. The organization seems good.

Key Facts of the Case

 The Scotch Whisky Association (hereinafter as “SWA”) is a Scottish organization which
objective is, inter alia, to protect the trade in Scottish whisky worldwide. Michael Klotz
is a German national who is involved in the trade of a whisky brand under the
designation “Glen Buchenbach”. This brand explicitly cites on the label that the product
is German and is produced in Berglen.
Procedural History
 The SWA addressed an action against Mr. Klotz before the Regional Court of Hamburg,
requesting the cessation of “Glen Buchenbach” whisky marketing under this designation,
since the word “Glen” is widely used in Scotland and, as a result, it can be identified as
part of the trade mark in the names of Scottish whiskeys. The SWA claimed that the use
of the said designation infringes Regulation No. 110/2008 of the European Parliament
and the Council of 15 January 2008 on the definition, description, presentation, labeling
and the protection of geographical indications (GIs) of spirit drinks (hereinafter as
“Regulation No. 110/2008”) and, specifically, Article 16 (a) to (c) thereof, that protects
the GIs registered in the Annex III of the Regulation, including the term “Scotch
Whisky”. Maybe the explanation could have gone under the key facts instead of under
the procedural history just so I could see more clearly how the case progressed through
the different courts.

 The Regional Court of Hamburg requested the issuance of a preliminary ruling from the
ECJ under Art. 267 TFEU concerning the following issues (see Issues).
Issues
I think the issues are too wordy
 Interpretation of Article 16 (a) of Regulation 110/2018 – more specifically, in order to
establish “indirect commercial use” of a registered GI, should the disputed element be
used in a form that is either identical to that indication or phonetically and/or visually
similar to it or is it sufficient for that element to evoke to the consumers some kind of
association with the indication or geographical area concerned? If the latter is correct,
should the national court take into account the context that the disputed element is used,
i.e. any indication of the true origin of the product accompanying the element, which
would make it easier to rebut an “indirect commercial use” claim?
 Interpretation of Article 16 (b) of Regulation 110/2018 – more specifically, in order to
establish “evocation” of a registered GI, should the disputed element be phonetically
and/or visually similar to it or is it sufficient for that element to evoke to the consumers
some kind of association with the indication or geographical area concerned? If the latter
is correct, should the national court take into account the context that the disputed
element is used in, i.e. any indication of the true origin of the product accompanying the
element, which would make it easier to rebut an “evocation” claim?
 Interpretation of Article 16 (c) of Regulation 110/2018– more specifically, in order to
establish “false or misleading indication”, should the national court take into account the
context that the disputed element is used, i.e. any indication of the true origin of the
product accompanying the element?
Holding / Judgment / Opinion
 For the establishment of “indirect commercial use” of a registered GI (Art. 16 (a) of
Regulation 110/2018), the disputed element must be used in an identical or phonetically
and/or visually similar form to that of the protected indication. Therefore, the simple
association of the disputed element with the protected indication or geographical area
concerned is not deemed sufficient for an infringement.
 For the establishment of “evocation” of a registered GI (Art. 16 (b) of Regulation
110/2018), the national court should assess the reaction or the confusion of the average,
reasonably well-informed and observant European consumer confronted by the product
bearing the disputed element with regards to the product bearing the protected indication.
Except from any phonetic and/or visual similarity between the disputed element and the
protected GI, as well as any incorporation of the GI in the designation, the national court
may take account of the conceptual proximity between the disputed element and the
protected indication. On the contrary, the national court should not take into
consideration the context or any indication of the true origin of the product
accompanying the element.
 For the establishment of “false or misleading indication” (Art. 16 (c) of Regulation
110/2018), the national court should not take into account the context that the disputed
element is used.

Interpretation Process / Reasoning

 When addressing the first legal issue, the ECJ focused on the key word “use”
(grammatical interpretation); the disputed element must have made actual use of the
protected GI as such or in a similar way, phonetically and/or visually. Moreover, the
Court pointed out the difference between Art. 16 (a) [commercial use] and (b) [any
misuse, imitation or evocation]; in Art. 16 (b), unlike Art. 16 (a), the designation in
question creates a close link with the protected GI but does not use it. The
aforementioned rationale automatically renders the second part of the question non
relevant.
 With regards to the first part of the second question, the term “evocation” of the
protected GI is explained based on previous ECJ case-law. As for the second part, the
ECJ suggests that the criterion of “some kind of association” is insufficient when it
comes to evocation, because (I) point (b) of Art. 16 of Regulation No 110/2008 would
overlap points (c) and (d) thereof; and (II) the objective of said Regulation, i.e. “a
systematic approach in the legislation governing spirit drinks” via “clearly defined
criteria” (par. 55 of the judgment at hand) would be abolished.

 In the third query, the ECJ held that the national court should not take into account the
context in which the disputed element is used, when assessing “false or misleading
indication” thereof, because this would limit the objective of Art. 16 (c). The said point,
unlike Art. 16 (a) and (b), provides the consumers and the businesses with wider
protection, including any information provided to the consumers on the description,
presentation or labeling of the product.
 Dicta
 The ECJ cites case law regarding to the distinction between direct and indirect
commercial use.
 The ECJ cites case law referring to the objective of the protection of Art. 16 of
Regulation No. 110/2008.
 The ECJ cites case law with regards to the meaning of “evocation” and how this could be
assessed by the court.
 The ECJ state its disagreement to the European Commission with regards to the
interpretation of Art. 16 (c) of Regulation No. 110/2008.

List of unfamiliar / unknown terms

 evocation
 encroach
 erroneous