Protect your Intellectual Property and avoid inadvertently infringing on others’ IP rights

A recent ruling by the European Court of Justice has demonstrated the importance of ensuring that the unique aspects of your brand and products are protected by the relevant Intellectual Property laws. The legal challenge in question was brought by the Scotch Whisky Association against the Waldhorn Distillery based in Swabia, Germany. It related to the distillery’s use of the word ‘glen’ in the name of its signature single malt whiskey “Glen Buchenbach”.

Scotch whisky enjoys a protected status under EU infringement laws, which prevent providers from outside of Scotland from selling versions of the product that have no link to its Scottish origins. The Scotch whisky industry is estimated to generate around £4bn in annual exports each year and directly employs over 10,000 people in Scotland. The Scottish Whisky Association argued that the use of the word ‘glen’ by Waldhorn Distillery led customers into mistakenly believing that the whisky was made in Scotland. Glen is a gaelic word meaning small valley and currently 31 of the 116 Scottish distilleries that benefit from the relevant EU infringement protection laws are named after the glen that they are located in.

The manufacture of whisky around the world is booming and, whilst the Scottish Whisky Association argue that elements in Scotland such as the water and weather give Scotch its distinct flavour, many manufacturers follow Scotch Whisky Association rules and feature pictures of Scottish highlands and glens on their labels in reference to the Scotch heritage. This case drew comparisons with the Scottish Whisky Association’s previous unsuccessful challenge against the Glenova Distillery in Nova Scotia, Canada in relation to its Glen Breton whisky.

Protection for products from a particular provenance or geographical location are granted by three initiatives established under the EU Protected Name Scheme, namely:

1. Protected Designation of Origin – this indicates that products have been produced in a specific geographical area using a recognised know-how, for example, Cornish clotted cream 
   
   
2. Protected Geographical Indication – relates to products that have been manufactured in a specified geographical area, and subsequently have distinct qualities that stem from that area, such as Cornish pasties
   
   
3. Traditional Speciality Guaranteed – indicates traditional character in the way the product has been produced, such as traditional bramley apple pie filling.

The court in this matter took no final view on Glen Buchenbach and referred the matter back to judges in Germany for a ruling. It did, however, indicate that the German whisky manufacturer may by infringing the rights enjoyed by Scotland in relation to its whisky production.

Protecting your Intellectual Property should be a priority for all businesses, not just large corporations or multi-nationals. This case demonstrates how powerful the law can be in protecting your brand and also ensuring that your valuable commodities will not have their value diluted by replication elsewhere.       

The level of complexity in most infringement matters means that getting it right is essential and protecting your brand should form part of the foundations of any business. Get in touch with us at BPE for our help in employing the most appropriate intellectual property strategy for your business, and for essential advice on how best to avoid inadvertently infringing on others’ IP rights.

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.