Scotch Whisky Association v Michael Klotz.
Date: 2018-06-07
22


On that point, it is sufficient to recall that, according to settled case-law, it is solely for the national court before which the dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances of the case, both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court (judgment of 4 April 2000, Darbo, C‑465/98, EU:C:2000:184, paragraph 19). In particular, it is for the national court alone to determine and formulate such questions. The parties to the main proceedings may not change their tenor (judgments of 18 July 2013, Consiglio Nazionale dei Geologi, C‑136/12, EU:C:2013:489, paragraphs 29 and 31 and the case-law cited, and of 6 October 2015, T-Mobile Czech Republicand Vodafone Czech Republic, C‑508/14, EU:C:2015:657, paragraph 28 and the case-law cited). Consequently, the Court cannot grant a request that the questions be reformulated in the terms which a party to the main proceedings indicates.
24


However, it must be reiterated that, in the procedure of cooperation established by Article 267 TFEU, it is not for the Court of Justice but for the national court to ascertain the facts which have given rise to the dispute and to establish the consequences which they have for the judgment which it is required to deliver (judgments of 3 September 2015, Costea, C‑110/14, EU:C:2015:538, paragraph 13, and of 10 March 2016, Safe Interenvíos, C‑235/14, EU:C:2016:154, paragraph 119). Moreover, the Court of Justice must take account, under the division of jurisdiction between the EU Courts and the national courts, of the factual and legislative context, as described in the order for reference, in which the questions put to it are set, (see, to that effect, judgments of 25 October 2001, Ambulanz Glöckner, C‑475/99, EU:C:2001:577, paragraph 10, and of 28 July 2016, Kratzer, C‑423/15, EU:C:2016:604, paragraph 27).
27


The Court has consistently held that, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (see, inter alia, judgments of 23 January 2018, Piotrowski, C‑367/16, EU:C:2018:27, paragraph 40, and of 7 February 2018, American Express, C‑304/16, EU:C:2018:66, paragraph 54).
30


In that regard, the Court has already held that the use of a trade mark containing a geographical indication, or a term corresponding to that indication and its translation, with respect to spirit drinks which do not meet the relevant specifications, constitutes, in principle, a direct commercial use of that geographical indication, for the purposes of Article 16(a) of Regulation No 110/2008 (judgments of 14 July 2011, Bureau national interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 55, and of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 34).
36


It must be recalled in that regard that the purpose of the system of registration of geographical indications of spirit drinks provided for by Regulation No 110/2008 is to contribute, as is noted in recital 2 of that regulation, to the attainment of a high level of consumer protection, to the prevention of deceptive practices and to market transparency and fair competition (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 24).
37


Furthermore, the Court has already made clear that the protection afforded by Article 16 of Regulation No 110/2008 to geographical indications must be interpreted in the light of the objective pursued by the registration of those indications, namely, as is apparent from recital 14 of that regulation, to allow the identification of spirit drinks as originating from a specific territory in situations where a given quality, reputation or other characteristic of those drinks is essentially attributable to that geographical origin (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 23 and the case-law cited).
38


Thus, as the Advocate General has noted in point 38 of his Opinion, the aim of the provisions of Regulation No 110/2008, in particular of Article 16, is to prevent the misuse of protected geographical indications, not only in the interests of consumers, but also in the interests of producers who have striven to guarantee the qualities expected of products lawfully bearing such indications (see, by analogy, judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 82, and of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 38). In that context, Article 16(a) prohibits, more specifically, operators from making commercial use of a registered geographical indication in respect of products that are not covered by the registration, in particular with the aim of taking unfair advantage of that geographical indication.
44


According to the Court’s case-law, the notion of ‘evocation’ covers a situation in which the term used to designate a product incorporates part of a protected geographical indication, so that when the consumer is confronted with the name of the product in question, the image triggered in his mind is that of the product whose indication is protected (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 21 and the case-law cited).
45


Thus, for the purpose of finding there to be an ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008, the Court has held that the national court must determine not only whether the term used to designate the product at issue incorporates a part of a protected geographical indication but also whether, when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose indication is protected. Therefore, the national court must essentially rely on the presumed reaction of consumers in the light of the term used to designate the product at issue, it being essential that those consumers establish a link between that term and the protected geographical indication (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 22).
47


In that regard, the national court must, in making that assessment, refer to the perception of an average European consumer who is reasonably well informed and reasonably observant and circumspect (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraphs 25 and 28).
48


In addition, the Court has held that it is legitimate to consider there to be an evocation of a protected geographical indication where, concerning products which are similar in appearance, the sales names are phonetically and visually similar (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 33 and the case-law cited).
50


In addition to the criteria relating to the incorporation of a part of a protected geographical indication in the disputed designation and to the phonetic and visual similarity between the designation and the indication, the Court has ruled that it is necessary, where appropriate, to take account of the criterion of ‘conceptual proximity’ between terms emanating from different languages, since such proximity, like the other criteria mentioned above, may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected, when he is confronted with a similar product bearing the disputed name (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 35 and the case-law cited).
51


It follows from the foregoing that, for determining whether there is an ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008, the decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected, a matter which it falls to the national court to assess, 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, or any conceptual proximity, between the designation and the indication.
53


However, the criterion set out by the referring court in its second question for the purpose of establishing ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008 –– namely that the disputed element of the sign at issue should evoke in the relevant public some kind of association with the protected geographical indication or the geographical area relating thereto –– cannot be used, as it does not establish a sufficiently clear and direct link between that element and the indication concerned.
54


Furthermore, as the Advocate General has observed in points 61 to 63 of his Opinion, if it were sufficient, for the purpose of establishing such ‘evocation’, that the consumer make an association of any kind whatsoever with a protected geographical indication, that would result, first, in point (b) of Article 16 of Regulation No 110/2008 encroaching on the scope of the following provisions of that article, namely points (c) and (d), which cover situations in which the reference to a protected geographical indication is even more subtle than an ‘evocation’ of that indication.
56


In view of all the foregoing considerations, the answer to the first part of the second question is that Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, 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 average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication.
57


As regards the second part of the second question, which relates to the role that the context in which the disputed designation is embedded plays in the national court’s assessment of whether there is an ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008, the Court notes that it is apparent from the wording of that provision that there may be an ‘evocation’ even if the true origin of the product is indicated (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 43 and the case-law cited).
58


The order for reference indicates that Mr Klotz, the defendant in the main proceedings, maintains that the designation ‘Glen Buchenbach’ is a play on words consisting of the name of the place of origin of the drink at issue in the main proceedings (Berglen) and the name of a local river (‘Buchenbach’). However, the Court has already held that it is immaterial, so far as Article 16(b) of Regulation No 110/2008 is concerned, that the disputed designation corresponds to the name of the undertaking and/or the place where the product is manufactured (see, to that effect, judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraphs 42 to 45).
59


Moreover, as the Advocate General has observed in point 81 of his Opinion, the Court has also made clear that the fact that the disputed designation refers to a place of manufacture that is known to consumers in the Member State where the product is manufactured is not relevant for the purpose of assessing the concept of ‘evocation’ within the meaning of Article 16(b) of Regulation No 110/2008, since that provision protects registered geographical indications against any evocation throughout the territory of the European Union and, in view of the need to guarantee effective and uniform protection of those geographic indications in that territory, it covers all European consumers (judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 27).
65


Next, as has also been noted by the Advocate General in point 96 of his Opinion, Article 16 of Regulation No 110/2008 contains a graduated list of prohibited conduct in which point (c) of Article 16 must be distinguished from points (a) and (b) thereof. Point (a) of Article 16 is limited to use of the protected geographical indication and point (b) to misuse, imitation or evocation. Point (c), however, widens the scope of the protection to include ‘any other … indication’ (in other words, information provided to consumers that is included on the description, presentation or labelling of the product concerned) which, while not actually evoking the protected geographical indication, is ‘false or misleading’ as regards the links between the product concerned and that indication.