German whisky cannot be labeled as “glen” whisky

Whisky from Swabia is not allowed to include the word “glen” in its name. This right is reserved for Scotch whisky according to the Oberlandesgericht (OLG) Hamburg – the Higher Regional Court of Hamburg – in a judgment from January 20, 2022 (case ref.: 5 U 43/19).

Geographical indications of origin can trigger certain associations in the minds of consumers, e.g., with regard to quality and taste, which is why they too may be eligible for trademark protection. We at the commercial law firm MTR Rechtsanwälte can now report that after years of legal wrangling, the Higher Regional Court of Hamburg has ruled that a Swabian distillery is not allowed to include the word “glen” in the name of its whisky, because the term gives consumers the impression that the whisky is from Scotland.

The Court’s decision is the latest chapter in a long-running legal dispute between the Swabian distillery and the Scotch Whisky Association. Arguing that the use of the word “glen” in the whisky’s name could give consumers the false impression that the German product comes from Scotland, the Association accused the distillery of infringing the registered geographical indication of source “Scotch whisky”.

Now, in another blow to the Swabian distillery following the decision of the Landgericht Hamburg – the Regional Court of Hamburg – to follow the Scotch Whisky Association’s line of reasoning, the OLG Hamburg has dismissed the distillery’s appeal. The Court noted that geographical indications for food items enjoy particularly high standards of protection, with this also encompassing allusive references in names. All that is required is for the product to be capable of being directly associated with a protected geographical indication of source via a reference of this kind, as was the case with “glen” whisky according to the OLG Hamburg. The Court went on to state that the term “glen” is reserved for whiskies from Scotland, clarifying that a whisky distilled in Germany cannot feature an identifier of this kind in its name, as this gives the misleading impression that the product comes from Scotland.

The case had already been heard by the European Court of Justice, which made it clear that even allusive references to protected designations of origin can be unlawful, the key factor being whether the reference is capable of triggering a direct association in the minds of consumers between the product and the designation of origin. The OLG Hamburg has concluded that the answer is yes in the case of “glen” whisky”.

Lawyers with experience in the field of IP law can advise on matters pertaining to trademark law.

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