Welcome back aboard! This is the second stage of our journey to discover the different degrees of protection of the geographical indications (GIs) of spirit drinks within the European Union (EU).
Last month, our trip led us to discover the protection offered by article 16.a) of the Regulation (EC) No. 110/2008, which prevents the commercial use of the GI both for comparable products not covered by the GI, and not comparable products insofar as such use exploits the reputation of the denomination.
Following our journey, it is now time to explore another stage of the protection, focusing on point 16.b) of this Regulation, which prevents:
(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other similar term;
This provision covers the situations in which the disputed sign does not use the GI as such but suggests it in such a way that the consumer is led to establish a sufficient link of proximity between the sign and the GI.
Throughout its case law, the European Court of Justice (ECJ) has clarified the concept of evocation.
Non-cumulative criteria emerged, allowing the qualification of the evocation by several clusters of indices:
- The partial incorporation of the GI into the disputed name
This is the use of part of the protected name in the term used to designate the product in question.
- The phonetic and visual similarities of the disputed name with the GI
On this point, a comparison of the verbal denominations present is made by looking at their appearance and pronunciation.
As the Court recently reminded, this criterion is not a mandatory condition (Case C‑44/17 Judgment of the Court of Justice of the European Union (Fifth Chamber) of 7 June 2018).
- The conceptual proximity between the disputed name and the GI
The Court has ruled that it is necessary, where appropriate, to take account of the conceptual proximity between terms emanating from different languages, since such proximity, like the other criteria mentioned above, may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected, when he is confronted with a similar product bearing the disputed name (judgment of 21 January 2016, Viiniverla, Case 75/15, EU:C:2016:35).
So basically, if the term used alludes the GI, the evocation could be characterized.
In making that assessment, the judge should refer to the perception of an average European consumer who is reasonably well informed and reasonably observant and circumspect.
These various criteria must be assessed in order to determine whether the consumer, in the presence of the name of the product, would be led to bear in mind, as a reference image, the goods benefiting from the GI in question.
Thus, when deciding on a potential case of evocation of a GI, the judge must essentially rely on the presumed reaction of the consumer, with regard to the term used to designate the product in question, the essential thing being that the latter establishes a link between this term and the GI (judgment of 21 January 2016, Viiniverla, Case 75/15), which gives a strong and obviously subjective power to the judge in charge of the case.
It is important to note that the evocation of the GI can be characterized even when the true origin of the product is indicated.
Besides, the ECJ has reminded in multiples occasions that the fact that the denomination corresponded to the name of the company or to the place where the product was manufactured was irrelevant.
The fact that the denomination refers to the manufacturing location of the product, which would be well known by the consumers of the member State from which the product originates, is also irrelevant to appreciate the notion of evocation, since the Regulation (EC) No. 110/2008 aims to protect GIs throughout all the EU territory.
To illustrate our point, let’s have a look to some concrete examples!
- CALVADOS / VERLADOS
Let’s go to Finland first, where the Finish company Viiniverla started in 2001 to manufacture and commercialize a cider spirit under the name “Verlados”.
Considering that the termination “-ADOS” of this denomination was evocating of the French GI “Calvados”, the European Commission alerted the Finish Authority, which adopted a decision prohibiting Viiniverla from marketing ‘Verlados’ as from 1 February 2014. Seized by Viiniverla, the Finish Market Court referred to the European Court of Justice (ECJ).
The ECJ then recalled that in the presence of comparable products, there is an evocation of the GI when the denominations are phonetically and visually related. In particular, when the denomination of the product has the same number of syllables than the GI and ends with the same two syllables.
The ECJ also judged irrelevant that the denomination “Verlados” might refer to the Finish town of Verla, and that a Finish consumer might recognize it from originating from Verla in Finland, the reference consumer being the European consumer.
What’s your opinion? Do you reckon “Verlados” might evoke the GI “Calvados”?
- SCOTCH WHISKY / GLEN BUCHENBACH
Now, let’s go to Germany to introduce you with a less obvious case. There, Mr. Klotz commercializes a Whisky produced in the Buchenbach valley, under the denomination “Glen Buchenbach”. On the labelling, one can read notably the following information: “Swabian Single Malt Whisky”, “Deutsches Erzeugnis” (German Product), “Hergestellt in den Berglen” (manufactured in the Berglen).
However, the Scotch Whisky Association considered that the denomination “Glen”, which is popularly used in Scotland instead of the word “Valley” and appears as a brand element of many Scotch whisky, might arouse an association with Scotland and Scotch Whisky, despite the addition of other indications on the label indicating the German origin of the product.
In this case, the ECJ reminded that it is necessary to take into account the conceptual proximity between the denomination and the GI. Besides, here again, the fact that the name is formed from a play on words between the place of origin of the product (“Berglen”) and the name of a local river (“Buchenbach”) is irrelevant. Finally, the context surrounding the disputed element and, in particular, the fact that it is accompanied by a precision as to the true origin of the product must not be taken into account.
Therefore, it looks like the ECJ invites the national jurisdiction to conclude that the denomination “Glen Buchenbach” is evocative of the GI “Scotch Whisky”.
Let’s have a try: would you think to a Scotch Whisky while watching this product?
We hope these illustrations helped you to understand the scope of the protection provided by article 16.b) of the Regulation (EC) No. 110/2008.
In the final part of our journey, we will discover the lasts paragraphs c) and d) of this article 16.
Annabella BIFFI and Marion ALARY – Intellectual property lawyers at INLEX IP EXPERTISE – LEXWINE Department.