Thank you for joining us for the last part of our journey to discover the different degrees of protection of the geographical indications (GIs) of spirit drinks within European Union (EU).
As you sure remember, the first steps of our trip led us to discover two degrees of protection offered by article 16.a) and b) of the Regulation (EC) No. 110/2008, focusing on commercial use and evocation of the GIs.
Beyond, this Regulation also prevents:
- (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin;
- (d) any other practice liable to mislead the consumer as to the true origin of the product.”
Further on in our journey, these new stopovers are undoubtedly the most exotic! They are also the least explored, as no case law implementing these provisions has been discovered to date. As we know you are curious travelers, let’s try to discover these provisions further.
First of all, provision 16.c) prevents the situations in which an information provided to consumers in the description, presentation or labelling of the product is qualified as “false or misleading” with regard to the product’s relationship with the GI.
The European Court of Justice (ECJ) made some interesting precisions on this provision while analyzing the “Glen Buchenbach” case (on this matter, see part 2/3 of our journey):
- This provision applies to any indication that may appear in any form in the description, presentation or labelling of the product, notably in the form of a text, image or container likely to provide information on the source, origin, nature or substantial qualities of this product;
- It is enough that a false or misleading indication appears on one of the medium mentioned (description, presentation or labelling of the product), to consider that it is likely to create an erroneous impression on the origin;
- Like the appreciation of the evocation of the GI, the context must not be taken into account while analyzing a false or misleading indication, which may be recognize even in the presence of additional information regarding the true origin of the product.
As for point (d), its purpose is to further extend the protected scope covering any practice that would mislead the consumer in any form, and without regard to the true origin of the product.
Article 16 should therefore be seen as a fishing net whose meshes are, from point (a) to point (d), increasingly narrow so as not to allow any fish to pass through. Thus, infringements not covered by point (a) may be covered by point (b) or (c) or (d).
As an instance, we can imagine that Glen Buchenbach use could fall outside the scope of point (b) – and not be considered as an evocation of Scotch Whisky – but it could fall under point (c) and be considered as a misleading practice, since it pretends to benefit with Scotch Whisky GI, as soon as the label contains the codes of Scotch Whisky, mainly the use of “Glen”.
From our French point of view, points c) and d) of article 16 could be assimilated to the provisions of the Consumer Code (Articles L. 441-1, L. 121-2 and 121-3) concerning the offence of deception and misleading commercial practices.
The notion of “commercial practice” is broad. European Directive 2005-29 of 11 May 2005 on unfair commercial practices by companies towards consumers defines it as follow: “any action, omission, conduct, approach or commercial communication, including advertising and marketing, by a professional in direct connection with the promotion, sale or supply of a product to the consumer”.
A misleading commercial practice has the effect of materially altering, or is likely to materially affect, the economic conduct of the normally informed and reasonably attentive and prudent consumer with respect to a good or service.
For instance, the existence of a misleading practice has been examined for the “Cromwell’s rare blended whisky” and the French Supreme Court confirmed the decision excluding the risk of confusion with Scotch Whisky.
The decision is based on the following findings:
- “Cromwell’s rare blended whisky” bottled for Cromwell International is not presented as Scotch whisky;
- The name “Cromwell” refers to England’s historical past and neither this name, nor the use of English language on the label, is likely to establish a link in the consumer’s mind between Scotland and the drink in question;
- The label of the disputed product makes no reference to Scotland, its traditions or landscapes;
- The fact that the company also markets under a similar presentation to that of “Cromwell’s rare blended whisky”, a Scottish whisky called “Cromwell’s Royal De Luxe Scotch Whisky” is not likely to lead to a risk of confusion between the disputed whisky and a Scotch whisky since neither the identical shape of the bottles containing these two whiskies, nor the similar composition of the labels on these bottles constitute elements identifying, to the French consumer, a whisky as being of Scottish origin;
- To conclude, the overall presentation of “Cromwell’s rare blended whisky” does not lead the moderately attentive public to attribute a Scottish origin to this product.
So, for the French Court, the consumer would not be misled in the presence of the product, i.e. he would not think that he is buying a drink benefiting with Scotch Whisky GI.
It would seem that if the Glen Buchenbach case was presented to the French courts, they would rather examine the use in the light of points (c) and (d) of Article 16, and it is not that obvious that they would lead to find an infringement to Scotch Whisky.
Now we have arrived to our destination, and through our trip you would have understood that Spirit drinks GIs enjoy a high protection whose meshes are adjustable to allow the least possible damage to pass through. Still the examination of an infringement is subjective and could depend on the seized Court and therefore on the relevant public concerned.
Passionate about the subject we would be delighted to discuss it with you in case of questions and/or comments; do not hesitate to contact us!
Annabella BIFFI and Marion ALARY – Intellectual property lawyers at INLEX IP EXPERTISE – LEXWINE Department.