What's in a name? - Geographical Indications - Zacco
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What’s in a name? – Geographical Indications

 – Fabio Pezzolato

Danish practice to align with EUIPO on applications for marks potentially in conflict with Geographical Indications. 

 The case[1]

The Scotch Whisky Association (TSWA) is a trade association whose members represent over “95% of Scotch Whisky by production[2] and their aim is to promote the Scotch Whisky trade domestically and internationally and to protect its interests worldwide. To this scope, TSWA also “prosecute, defend and enter into legal proceedings in any territory of the world in defence of the interests of the Scotch Whisky trade[3], including through the protection and enforcement of rights represented by the Geographical Indication (GI) “Scotch Whisky”.

Scotch Whisky is produced exclusively in Scotland in accordance with UK legislation, namely, The Scotch Whisky Regulations 2009 and the Product Specification for Scotch Whisky (which applies across the EU, including in Denmark). Scotland’s whisky heritage is well known, with records acknowledging over 500 years of production, and, as Scotland’s biggest food and drink export. It is specifically protected and recognised in the laws of many countries around the world.

Scotch Whisky is famous worldwide, including in Denmark, and, in 2022, exports of Scotch Whisky to Denmark alone were worth over £24 million. In 2021, Scotch Whisky constituted a market share of over 55% of all whisky/whiskey sold in the country.

In 2020, TSWA lodged an opposition against an application for the trademark JOHN A. McLAREN DISTILLERS 1831 (app. no. VA 2019 02327), filed in Denmark, for the goods ‘alcoholic beverages except beers; alcoholic preparations for making beverages’ in class 33. For the sake of simplicity, we will refer to the goods claimed within the application as ‘alcoholic beverages’.

The opposition was based on evocation of the GI Scotch Whisky, registered for “whisky or whiskey” and protected throughout the EU in accordance with the rules laid down by Regulation (EU) 2019/787 (the Regulation)[4].

The scope of this article is to

  • Present how it can be proven that a trademark evokes a GI in the sense of art. 21(2)(b) of the Regulation
  • Show the importance of checking accuracy of and consistency amongst the different language version of EU regulations
  • And inform of the upcoming changes in the registration practice of the DKPTO affecting applications for marks potentially evoking GIs.

The legal framework

Pursuant to art. 3(4) of the Regulation,

‘geographical indication’ means an indication which identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin;

To fulfil the Regulation’s requirements and in order to maintain its status as a GI in the EU, Scotch Whisky must be produced in accordance with a Product Specification. The Product Specification for Scotch Whisky summarises the reputation, characteristics and main production processes for Scotch Whisky, incorporating the provisions of The Scotch Whisky Regulations 2009 as well as a government verification scheme. The purpose of these is to ensure that all drinks sold as “Scotch Whisky” comply with the Product Specification, prior to it being placed on the market.

According to art. 21(2)(b) and (c) of the Regulation, GIs are protected inter alia against

(b) any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar, including when those products are used as an ingredient;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product in the description, presentation or labelling of the product liable to convey a false impression as to the origin of the product;

Pursuant to at 36 (1) of the Regulation,

The registration of a trade mark, the use of which corresponds or would correspond to one or more of the situations referred to in Article 21(2), shall be refused or invalidated.

According to a direct translation of the Danish Trade Marks Act (TMA)[5], sec. 15(3)(3),

A trade mark shall, following an opposition, be refused registration, or, if it is registered, it shall be declared invalid, in the following circumstances:

(3) to the extent that, pursuant to EU legislation or Danish law providing protection to designations of origin and geographical indications

  • an application for a designation of origin or a geographical indication had already been submitted in accordance with EU legislation or Danish law prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration or[6];
  • the designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trade mark.

The opposition

With the opposition, TSWA claimed that the applied for mark evoked the GI Scotch Whisky in the sense of art. 21 of the Regulation, and should therefore be refused registration pursuant to art. 36 of the Regulation and sec. 15(3)(3) of the TMA. This is because the goods claimed with the application, being the broad category of alcoholic beverages, encompassed whisky without limitation as to origin i.e. whisky other than Scotch Whisky, for which using the applied for mark would evoke the GI Scotch Whisky.

More specifically, TSWA argued that the name McLAREN was closely connected to Scotland and, when used on whisky, would evoke an association with the Scotch Whisky GI in the minds of consumers, considering a number of factors including:

  • The worldwide fame of Scotch Whisky
  • The fact that prefixes Mc and Mac are typical of Scottish surnames and historical clan names
  • McLaren itself is a Scottish surname and clan name
  • Mc and Mac names are commonly used as part of brand names for Scotch Whisky
  • There are multiple Scotch Whisky distilleries whose names incorporate Mc or Mac
  • Supportive case law from the EU and other jurisdictions

The evidence was backed up by a consumer survey that demonstrated:

  1. 45% of the 645 respondents, who had purchased or consumed whisky in the last 12 months would think “Scotland”, when asked “If the trademark “JOHN A. McLAREN DISTILLERS 1831” was used on a whisky, in which countries/territories would you think the whisky was produced?”
  2. A further 5% of the respondents gave an answer that associated the mark in some way with the UK, totaling 50% of respondents for an association with either Scotland or the UK.

The opponent proposed that the answers associated with the UK were relevant, since Scotland is a constituent country of the UK, and Scotch Whisky should therefore be regarded as a UK product as well as a Scottish product.

The survey results indicated i.a. that a clear and direct link exists between the mark and the protected GI Scotch Whisky and, when used on whisky, triggers in the mind of a significant portion of the relevant public the image of Scotch Whisky.

As mentioned, the opponent referred to existing case law from several jurisdictions worldwide, including EU case-law interpreting art. 21(2)(b) and (c) of the Regulation, in particular the CJEU decision in case in C-44/17 – Glen Buchenbach.

In this decision, the court held that “for determining whether there is an ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008, the decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected” (para 51; Article 16(b) of Regulation No 110/2008 now being replaced by art. 21(2)(b) of the Regulation).

In this connection, the decision also clarified that a term should fall under the scope of art. 16(b) of Regulation (EC) No. 110/2008 (now replaced by art. 21(2)(b)) even where there is no phonetic and/or visual similarity with the protected geographical indication, or does not include them in part.

The applicant did not submit defensive statements.

The Danish PTO dismissed the opposition, considering that, since ‘alcoholic beverages’ is a category that also encompasses Scotch Whisky, it can be concluded that the application for JOHN A. McLAREN DISTILLERS 1831 was filed for goods that, in principle, could live up to the requirements established for spirits to be entitled to use the GI Scotch Whisky. They did not examine whether the applied for mark constituted an evocation of the GI Scotch Whisky.

The appeal

TSWA lodged an appeal against the decision, i.a. referring to the EUIPO’s registration practice. This states that trademarks which, in principle, conflict with a GI, and that are sought registered for products that are comparable to those where a GI is protected, may be registered only if the goods claimed are restricted to those for which the GI is protected[7].

The applicant did not intervene, but the PTO submitted observations. In its submissions, the PTO stated that the language of art. 36(1) of the Regulation wherein ”The registration of a trade mark the use of which corresponds or will correspond to one or more of the situations referred to in Article 21(2)”[8]  delimits the scope of application of art. 36(1) of the Regulation to situations in which the trademark is or will be used for products not produced in accordance with the product specification for the relevant GI.

According to the DKPTO, art. 36(1) of the Regulation does not provide for the refusal of a trademark application where the trademark is potentially in conflict with a GI, if the specification claimed with the trademark being applied for consist of a category of products which – alongside other products of the same category – also include the products for which the GI s protected.

On the contrary, to apply art. 36(1) of the Regulation, it has to be examined whether the use of the mark evoking a GI has already taken place, or evidence shows that such use will take place, for other alcoholic beverages than those covered by the GI in question. Only in such cases would the PTO be entitled to refuse registration of the mark.

The opposed mark was apparently not yet in use so, because the opponent had not provided any evidence of use, or evidence of intended use, of the mark in commerce, the application could not be refused.

Furthermore, the DKPTO questioned the EUIPO’s practice. According to the EUIPO, if a mark potentially infringing a GI in the sense of art. 21 of the Regulation is sought registered for a broad category of goods which also encompasses goods for which such GI is protected, a refusal can be waived if the goods claimed are restricted to the goods for which the GI is protected[9]. In practice this would mean that if a mark evoking the GI Scotch Whisky is sought registered for alcoholic beverages in class 33, a refusal can be overcome if the goods are restricted, for example, to “alcoholic beverages, namely, Scotch Whisky”, or “whisky complying with the specifications of the Scotch Whisky GI “[10].

In this regard, the DKPTO argued that the EUIPO’s restriction requirements lack a legal basis in EU legislation, instead constituting an indication of the EUIPO wishing that applicants should indicate in their list of goods that they are familiar with the provisions in the legislation that regulate the use of the relevant GI in relation to relevant products.

While reiterating its arguments and conclusions, the appellant pointed out errors in the Danish version of the Regulation, including in art. 36(1)[11]. In this regard, the appellant stated that the English version of art. 36(1) of the Regulation is: “The registration of a trade mark the use of which corresponds or would correspond to one or more of the situations referred to in Article 21(2)”[12]. This language corresponds to that used in the several other language versions of the Regulation, such as the Italian, Spanish, German, French, Portuguese and Swedish versions.

For the appellant, the verb “would correspond” is used in the English version (and other language versions) of the Regulation instead of the future tense “will correspond” to refer to a hypothetical situation (something that might occur), rather than a future situation (something that will occur). Yet,  a(n hypothetical) situation in which it can be concluded, according to objective criteria – in this case the goods for which the registration of the trademark is sought – that such a trademark would certainly infringe a given GI if ever used.

In other words, there is no need to prove a current infringing use or the planned (future) infringing use of a mark. For an application to be refused, it is sufficient to establish that its specification encompasses goods for which the mark, if used, would infringe a GI. Only if sought registered for the specific goods for which the GI is protected, and such goods alone, the mark should be allowed to register.

The appeal decision (AN 2021 00042)

The Board of Appeal reversed the decision of the DKPTO and upheld the opposition, finding that

“… the trademark VA 2019 02327 JOHN A. McLAREN DISTILLERS 1831 <w> applied for may evoke associations to ”SCOTCH WHISKY”, which is a protected indication of origin, which is protected according to the GI Regulation on the common market organization of spirit drinks. Registration of the trademark must therefore respect the protected indication, cf. Section 15(3)(iii) of the Danish Trade Marks Act”

They consequently ordered that the opposed mark JOHN A. McLAREN DISTILLERS 1831 should be registered only for the goods

“whisky; whisky-based preparations for making beverages; all goods mentioned above in accordance with the geographical indication ”SCOTCH WHISKY”[13].

The Board of Appeal continued:

“The EU Court of Justice has decided that the use of a trademark can be contrary to Article 21(2)(b), when the trademark in question indicates a GI (geographical indication) even if the consumers have not been misled. Whether a trademark constitutes an evocation of a GI depends on whether the trademark will evoke sufficient direct and unambiguous association with the GI in question with the consumer (thus case C-44/17 Glen Buchenbach, grounds 45, 53 and 65 and case C-614/17 Queso Manchego).”

Finally, the Board of the Appeal sided with the opponent establishing

“… that the Danish translation of Article 36(1) of the GI Regulation is inaccurate. The wording of Article 36(1) of the Regulation ‘will correspond’ should thus read as ‘would correspond’, and therefore no documentation can be required for the trademark already being used contrary to the GI Regulation nor probability that such use will take place.”

Comments

The language of the provisions establishing rules to solve conflicts between trademarks and GIs is not entirely consistent with the language used in the EUTMR[14] and the EU Trademark Directive[15] to which many trademark practitioners are accustomed. Such inconsistency, and potential imprecision in different versions of the Regulation, may give rise to difficulties in the interpretation and application of these important rules.

Construing art. 36(1) of the Regulation, as pointed out by the appellant and endorsed by the Board of Appeal in its decision, confers full consistency in the treatment of

  • the situations in which (due to a conflict with a GI) the use of a trademark shall be prohibited (the circumstances enumerated in art. 21 of the Regulation)
  • and the situations in which (due to a conflict with a GI) the registration of a trademark shall be refused.

When the registration of a trademark in conflict with a GI is sought, for instance in the case of evocation for example, such registration shall be refused without the need for the trademark authority to acquire any proof of actual (infringing) use of the trademark. Instead they need only have regard to the hypothetical future (infringing) use of such trademark, to be assessed on the basis of the objective criteria represented by the goods claimed with the trademark application.

In this context, when a trademark is sought registered for a broad product category encompassing other products than those for which the GI is protected (e.g. ‘alcoholic products’ vis-à-vis ‘Scotch Whisky’), the registration of the trademark shall be refused unless the specification is restricted exactly to the specific products for which the GI is protected. In fact, for all other comparable products, any current use or hypothetical future use of the trademark would infringe the GI.

Based on the Board of Appeal decision, the DKPTO has indicated that they will align its registration practice to that of the EUIPO. This would mean that, in the future, when a trademark in conflict with a GI is sought registered, the registration will only be allowed when the goods claimed are only those specific goods for which the GI is protected, with the exclusion of any broad product category also encompassing additional goods.

Finally, this case shows that consumer surveys are powerful tools when having to prove the public’s perception of a given trademark, not least in relation to the possible evocation of a GI. It is very important for trademark practitioners to cooperate closely with the survey experts to define the relevant queries, and how such queries shall be worded. If the wrong questions are asked, or if the right questions are asked the wrong way, the value of the probative value of the survey can be at risk.

Please note that an abridged version of this article was published by the World Trademark Review on 15/06/2023 as part the ongoing collaboration between the WTR and Zacco as Scandinavian Contributor.

 

[1] The author of this article represented TSWA in the proceedings.

[2] Source: https://www.scotch-whisky.org.uk/who-we-are/, last visited on 1 June 2023.

[3] From TSWA Memorandum of Association

[4] Regulation (EU) 2019/787 of the European Parliament and of the Council of 17 April 2019 on the definition, description, presentation and labelling of spirit drinks, the use of the names of spirit drinks in the presentation and labelling of other foodstuffs, the protection of geographical indications for spirit drinks, the use of ethyl alcohol and distillates of agricultural origin in alcoholic beverages, and repealing Regulation (EC) No 110/2008.

[5] Act no. 88 of 29/01/2019.

[6] We note that there is a discrepancy between the text of the TMA and art. 5(3) of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, since the Directive does not contain the term “or”. We believe that the Danish implementation is incorrect, since the requirements under 15(3)(3)(a) and (b) should be cumulative, rather than alternative.

[7] See EUIPO Guidelines (last visited on 1 June 2023), https://guidelines.euipo.europa.eu/2058843/2066681/trade-mark-guidelines/5-3-restriction-of-the-list-of-goods

[8] This is the literal translation of the Danish version of the provision but one word has been placed in bold by the authors..

[9] From the EUIPO Guidelines, https://guidelines.euipo.europa.eu/2058843/2066681/trade-mark-guidelines/5-3-restriction-of-the-list-of-goods, last visited on 1 June 2023.

[10] The examples are the authors, and are inspired by specifications required by the EUIPO.

[11] The author has requested EUR-LEX to amend these and other translation errors.

[12] The bold is ours.

[13] The cursive is ours.

[14] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.

[15] Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.

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