Association with a registered geographical indication not sufficient to establish ‘indirect commercial use’ or ‘evocation’ of this indication
08-06-2018 Print this page
For the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it: not sufficient that that element is liable to evoke some kind of association with the indication concerned or the geographical area relating thereto. For the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the consumer is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected: account is not to be taken either of the context surrounding the disputed element or the fact that that element is accompanied by an indication of the true origin of the product concerned. For the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.
PROTECTED DESIGNATION OF ORIGIN
From the CJEU press release: “[…] In today’s judgment, the Court of Justice holds, first, that it is apparent from the wording, context and objective of the Regulation that, for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto.
Second, the Court holds that the decisive criterion for finding there to be an ‘evocation’ of the protected geographical indication is whether, when an average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the name of the product concerned, the image triggered in his mind is that of the product whose indication is protected. That is a matter for the national court to determine, taking into account, as the case may be, the partial incorporation of a protected geographical indication in the disputed designation, any phonetic and/or visual similarity between that designation and that indication, or any conceptual proximity between the designation and the indication. For the purposes of that determination, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.
Consequently, in the present case, the national court will have to determine whether an average European consumer thinks directly of the protected geographical indication ‘Scotch Whisky’ when he is confronted with a comparable product bearing the designation ‘Glen’.
However, it is not sufficient that the disputed element of the sign at issue evokes in the relevant public some kind of association with the protected geographical indication or the geographical area relating thereto. Such an interpretation of the concept of ‘evocation’ would jeopardise the objective of the Regulation, which is ‘ensure a more systematic approach in the legislation governing spirit drinks’.
Read the press release here.
IPPT20180607, CJEU, Scotch Whisky Association
