Last Saturday, 27 March 2021, marked International Whisk(e)y Day, which was first launched and celebrated in 2008. This day is a particular cause for celebration in Scotland, where Scotch Whisky accounts for 75% of Scottish food and drink exports, worth around £3.8 billion per year.
Scotch Whisky is a globally renowned product, known for its quality and unique flavour. However, not all whiskies can be Scotch Whisky, as clarified by the strict criteria outlined in the Scotch Whisky Regulations 2009 and Scotch Whisky has been defined in UK law since 1933.
In order to be classified as a Scotch Whisky, the product must:
- be produced in Scotland using only cereals, water and yeast;
- be matured for a minimum of three years in an oak cask;
- have a minimum alcoholic strength by volume of 40%;
- be distilled at an alcoholic strength by volume of less than 94.8% so that the aroma and taste derived from the raw materials are retained;
- not have any added favouring or sweetening.
In addition, Scotch Whisky is protected as a registered geographical indication under Article 16(a) to (c) of Regulation (EC) No 110/2008. A registered geographical indication is a distinctive sign used to identify products that have a particular geographical origin and that possess unique qualities, characteristics, or a reputation associated with their place of origin – for example, Scotch Beef and Scottish Farmed Salmon as well as Scotch Whisky.
Primarily, geographical indications protect producers and consumers against misuse, imitation, or any other practice likely to mislead consumers in relation to a product that does not conform to the applicable standards.
Impact of Brexit
Previously, the use and registration of protection geographical indications was regulated by EU law. From 1 January 2021, the UK intends to introduce a new geographical indication protection scheme for agri-food products, spirit drinks, wines and aromatised wines. However, it has been decided that all products already protected under the EU geographical indication schemes on 31 December 2020, are now protected under both the UK and EU schemes. Therefore, Scotch Whisky protection as a geographical indication remains unaffected by Brexit.
Although, Scotch Whisky is a very well-known and strongly protected geographical indication, we consider below a case regarding other forms of words that can evoke a geographical indication, such as the word ‘Glen’, even in cases where the protected designation itself is not being used.
Case Law: Scotch Whisky Association v Michael Klotz
In 2018, The Scotch Whisky Association (SWA) challenged Michael Klotz, an online whisky distributor in Germany, on his right to sell whisky under the brand name ‘Glen Buchenbach’. The case was referred to the European Court of Justice (ECJ) to provide advice in interpreting the EU laws relating to the matter before a judgement was issued by the relevant Regional Court. The SWA contended that Article 16(a) to (c) ensures that geographical indications are protected not only against the use of the distinct indications, but also against references that evoke the geographical origin of the indication. SWA claimed that because 'Glen' is a Gaelic term used locally in Scotland to refer to a ‘deep valley’ and, more specifically, is a component of the trade mark in the brand names of many Scotch Whiskies, it evoked an association with Scotland and Scotch Whisky. They argued that this should apply despite the branding of the German whisky displaying information which stated that the product was made in Germany.
Ultimately, the European Court of Justice held that in order to establish that there is "indirect commercial use" of a geographical indication under Article 16(a) of the Regulation, the disputed brand must be “used in a form that is either identical to that indication or phonetically and/or visually similar to it”. Therefore, it was not sufficient that the disputed brand may evoke some kind of association with the indication or the relevant geographical area.
In relation to Article 16(b) of the Regulation, the ECJ provided guidance for the referring Regional Court, stating that in order to establish 'evocation' of a geographical indication, the referring court is required to determine whether average consumers think directly of the protected geographical indication, ‘Scotch Whisky’, when they see a comparable product bearing the designation ‘Glen’.
Finally, in relation to Article 16(c), the ECJ ruled that the context in which the disputed branding is used should not be taken into account by the referring Regional Court for the purpose of establishing that there is a 'false or misleading indication'.
Based on the ECJ’s interpretation of Article 16 of the Regulations, the referring Regional Court held that the use of the sign ‘Glen Buchenbach’ constituted an infringement because the use of the term ‘Glen’ gives the average European consumer the impression that the whisky is designated as a Scotch Whisky, and thus is misleading.
The above case serves as a great reminder of the protection Scotch Whisky has as a geographical indication, along with the use of other words to evoke such geographical indication. On similar note, examples of other branding elements that have been found to create an association with Scotland and Scotch Whisky are the word ‘Highland’ and other Scottish indicia.
Although the Scotch Whisky industry is facing many challenges as a result of the COVID-19 pandemic, including, amongst other things, Brexit exports and global tariffs, we continue to celebrate and reflect on the many successes it has had around the globe. In particular, in light of the recent suspension of the US tariffs on Scotch Whisky, we celebrate International Whisk(e)y Day with high hopes for the future! Slàinte Mhath!
This article was co-written by Clare Tuohy, Trainee Solicitor.