Whisky Galore! - Whisky, Intellectual Property Rights, and the European Courts

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04 March, 2019

New guidance from the Court of Justice of the European Court allows Scotch whisky distillers greater strengths against similar products with misleading brand names.

There are many witty exchanges to enjoy in the classic BBC political comedy "The Thick of It". A personal favourite sees political aide Ollie Reader burst in to the office of Peter Capaldi's Malcolm Tucker to inform him of an unwanted intruder in the building:

Ollie: "Um, Glen is in reception."

Tucker: "Hoddle? Miller? Close?... Morangie?"

Whilst it is debatable where 'Glenmorangie' sits in terms of fame and popularity alongside its acting, football and musical namesakes, it is arguably the most well-known of the several whiskies to use the prefix 'Glen' to pay homage to the water source of their distilleries. Glenfiddich, Glenfarclas and Glenlivit are just a few further, delicious, examples.

So iconic is the four-letter word, that for many it invokes pure Scottish spirit in more ways than one.

The Case

The popularity and abundance of the word 'Glen' in Scottish whisky brands is perhaps why the Scotch Whisky Association (SWA) has taken issue with the branding of 'Glen Buchenbach', a new tipple distilled in the forests and mountains of…Germany.

The SWA, which represents the majority of Scottish distilleries, has taken action in German courts. They have argued that the use of the word 'Glen' within Buchenbach's product could easily lead consumers to assume the product is one of Scottish origin. To help their case, they have pointed out that 'Scotch' is already an example of a 'Protected Geographical Indicator' (PGI). Along with classic products like Champagne, Feta or the Cornish Pasty, the use of the word 'Scotch' can only be applied to products with a specific point of origin.

The SWA claimed that the use of the word 'Glen' would be equally misleading to customers.

The Outcome

The Courts of Germany sought guidance from the Court of Justice of the European Union on the scope of Scotch Whisky's PGI protection. In a victory for the SWA, the CJEU ruled that the word 'Glen' does more than put one in mind of Scotland, but has become intrinsically linked to Scotch Whisky specifically.

Even though the packaging of Glen Buchenbach made it clear that the origin of the spirit was Germany, the German courts ruled that this was not enough to overcome the overwhelming assumption that any whisky product beginning with the word 'Glen' would be of Scottish origin. Whilst agreeing that even though the German distiller did not specifically use the word 'Scotch', the Court ruled that what they had done was to promote a 'misleading indication' that their product was of Scottish origin and had therefore breached PGI rules.

The Significance

The decision of the German courts is undoubtedly huge for Scottish distillers, and indeed the economies of Scotland and the UK as a whole. Worldwide exports of whisky have in the recent past made up a quarter of the UK's food and drink revenues, and contributes over £4.25 billion to the UK economy each year. This is before one considers the tourism and related industries that also benefit from its popularity.

Any additional protection and IP rights the industry can acquire are undoubtedly a beneficial thing for the UK. Whilst it may not assist Malcom Tucker, removal of any ambiguity as to the meaning of 'Glen' from a whisky perspective is a significant coup for the Scottish distilleries.

Forbes regularly advises on all matters relating to trading law and intellectual property. Contact us at John Pickervance to discuss any issues further.

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