It has been previously reported that the Federal Court had decided that a whisky made in the style of Scotch whisky cannot use the word GLEN in its name if it is not distilled in Scotland.
The Federal Court of Appeal disagrees.
In a unanimous decision delivered on January 22, 2009, the Federal Court of Appeal held that Cape Breton distiller Glenora Distillers International Ltd. is entitled to register the trademark GLEN BRETON for use in association with its single-malt whisky (Glenora Distillers International Ltd. v. The Scotch Whisky Association, 2009 FCA 16).
In its opposition, the Scotch Whisky Association contended that the word GLEN had become recognized as designating whisky from Scotland (i.e., Scotch whisky) and was therefore a prohibited mark, and that the use of GLEN BRETON in association with a whisky distilled in Canada was likely to mislead. The Association relied on the use of GLEN-prefixed marks in association with well-known Scotches such as GLENLIVET, GLENMORANGIE and GLENFIDDICH.
The Opposition Board disagreed and allowed the application. As reported previously, the Association successfully appealed the decision of the Opposition Board to the Federal Court, which concluded that the word GLEN had become recognized in Canada as designating Scotch whisky and was therefore a prohibited mark, and directed that the application be refused.
The Federal Court of Appeal has now reversed that decision, holding that the Court below made an error in failing to consider whether GLEN — having only previously been used as a component of various trademarks — was in itself a trademark designating Scotch whisky. While the word GLEN has been used as a prefix for many trademarks associated with Scotch whisky, the Federal Court of Appeal noted that it had never been used as a trademark standing alone in association with whisky or otherwise. The Court therefore held that the word GLEN had not been shown to be a mark designating Scotch whisky and that it was not prohibited.
Unless leave to appeal to the Supreme Court of Canada is sought and allowed, this decision marks the end of Glenora’s long battle to register the trademark, which began in November 2000 when it filed its application with the Canadian Trademarks Office.
Geneviève M. Prévost, Toronto
Our articles and newsletters are informational only, and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.