Danish practice to align with EUIPO on following GI conflict over Scotch Whisky
As a result of the Scotch Whisky Association’s opposition to a Danish trademark application, the Danish Patent and Trademark Office (DKPTO) has indicated that it will align its registration practice more closely with that of the EUIPO, which it had previously. The case also demonstrates the importance of consumer surveys; trademark practitioners should cooperate closely with survey experts to define specific and relevant queries.
Scotch whisky is famous worldwide, including in Denmark. In 2022 exports of Scotch whisky to Denmark alone were worth over £24 million, with the drink accounting for over 55% of all whisky/whiskey sold in the country in 2021.
In 2020, the Scotch Whisky Association lodged an opposition against an application at the DKPTO for the trademark JOHN A McLAREN DISTILLERS 1831 (VA 2019 02327) for goods in Class 33: alcoholic beverages except beers and alcoholic preparations for making beverages. The opposition was based on evocation of the geographical indication (GI) Scotch Whisky, which was registered for whisky or whiskey and protected throughout the European Union (in accordance with the rules laid down by Regulation 2019/787).
In its opposition, the association claimed that the applied-for mark evoked the GI Scotch Whisky because the application encompassed whisky as a whole, without limitation as to its origin. In other words, it could theoretically include whisky other than Scotch whisky, even though Scotch Whisky is a protected GI.
More specifically, the association argued that the prefix ‘Mc’ in the name ‘McLaren’ is common in Scottish surnames and thus the names of other Scotch whisky distilleries, which could mislead consumers into thinking that the brand and whisky were from Scotland. Indeed, McLaren itself is both a Scottish surname and clan name.
A consumer survey backed up this argument; it demonstrated a direct link between the proposed trademark and Scottish production in the minds of a large portion of the relevant public. The European Court of Justice’s Glen Buchenbach decision (C-44/17) was also cited in support of the opposition.
The DKPTO’s stance
The DKPTO originally dismissed the opposition, considering alcoholic beverages to be a category that encompasses Scotch whisky. While it did not examine whether the mark would evoke an association with the protected GI, it concluded that the application was filed for goods that, in principle, could live up to the requirements established for Scotch whisky.
This decision was appealed, referring, inter alia, to the EUIPO’s registration practice, which states that trademarks sought for products that are comparable to those protected by a GI may be registered only if the goods claimed are restricted to those for which the GI is protected.
The DKPTO questioned the EUIPO’s practice, arguing that current regulations do not provide for the refusal of a trademark application where the mark is potentially in conflict with a GI. Since the opposed mark apparently was not yet in use, the application could not be refused for alcoholic beverages.
While reiterating its arguments and conclusions, the plaintiff pointed out some errors in the Danish translation of the regulation, including in Article 36(1). The English version states: “the registration of a trademark the use of which corresponds or would correspond to one or more of the situations referred to in Article 21(2).” The use of “would correspond” is in line with several other translations of the regulation, including the French, German, Italian, Portuguese, Spanish and Swedish versions. The Danish translation states that this as “will correspond”, arguably changing a hypothetical situation into an actual one. According to objective criteria, the applied-for trademark would certainly infringe the association’s GI if it was ever used for other alcoholic beverages than Scotch whisky. Therefore, there should be no need to prove current or planned infringing use of such a mark.
The Board of Appeal
The Board of Appeal reversed the DKPTO’s decision and upheld the opposition, finding that the applied-for mark may evoke associations with the Scotch Whisky GI in consumers’ minds if used with whisky. It held that the mark should be refused registration since it was not sought to be registered solely for Scotch whisky. In other words, consideration to the existing GI must be given.
The Board of Appeal also stated that Article 36(1) should be read as “would correspond”. In other words, registration should be refused without the need for the relevant trademark authority to acquire any proof of actual (infringing) use of the trademark. Instead, they need only consider hypothetical future (infringing) use, to be assessed using the objective criteria represented by the goods claimed in the application.
In this context, when a trademark applicant seeks registration for a broad product category that includes other products than those for which a GI is protected, the registration should be refused unless the specification is restricted to the specific products for which the GI is protected.
In fact, for all other comparable products, any current or hypothetical future use of the trademark would infringe the GI. In the Scotch whisky example, this means that the trademark might have been granted to the Danish applicant if it had claimed only the goods ‘Scotch whisky’ (ie, whisky distilled in Scotland according to the Scotch Whisky GI specifications), but refused otherwise.
The case also demonstrates that consumer surveys can be powerful tools when evidence of public perception is required. It is crucial for trademark practitioners to cooperate closely with survey experts to define specific and relevant queries – if the wrong questions are asked, or if the right questions are asked in the wrong way, it could diminish the potential value of the results.
The DKPTO has since indicated that it will align its registration practice to that of the EUIPO.
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