The word “Glen” can be used in non-Scottish whisky trade-marks
In the latest battle in the fight between Glenora Distillers and the Scotch Whisky Association over the GLEN BRETON trade-mark, the Federal Court of Canada (FCA) recently allowed the registration of the GLEN BRETON trade-mark trade-mark for single-malt whiskey. The FCA ruled that the word “glen” does not designate a whisky produced in Scotland and is therefore not a generic term that is an unregistrable trade-mark under Canada’s Trade-mark Act.
Glenora, located in Cape Breton, Nova Scotia, Canada, applied to register GLEN BRETON as a trade-mark for use with single-malt whiskey in 2000. Glenora’s GLEN BRETON whisky is produced in Canada.
Glenora’s application was opposed by the Scotch Whisky Association. The opposition ground relevant to the FCA decision was that the word “glen” had become recognized in Canada as designating Scotch whisky, due to the use of “glen”-prefixed marks in Canada association with several well-known Scotch whiskies (e.g. Glenlivet, Glenmorangie and Glenfiddich). Therefore, GLEN BRETON was a prohibited mark under section 10 of the Canadian Trade-marks Act. Section 10 bars the registration of words or phrases as trade-marks when those words or phrases are generic, common to the trade or otherwise non-distinctive.
The Trade-marks Opposition Board (TMOB) found otherwise. The evidence did not establish that the word “glen” was a generic, common or otherwise non-distinctive word barred from registration as a trade-mark. The TMOB observed even if the registration of the word “glen” was prohibited under section 10, the GLEN BRETON trade-mark does not so nearly resemble the word GLEN as to be likely be mistaken for it.
The Association appealed the TMOB’s decision to the Federal Court. The Association filed additional evidence demonstrating, among other things, the sale of Scottish whiskies bearing “glen”-prefix marks in Canada.
The Federal Court reversed the TMOB’s decision. Addressing the section 10 objection, the Court found that “glen” was recognized in Canada as designating whisky produced in Scotland. Therefore, GLEN BRETON was a prohibited mark under the Trade-marks Act.
Glen Breton appealed the Federal Court’s decision to the Federal Court of Appeal.
The Federal Court of Appeal’s decision
In overturning the Federal Court’s decision, the FCA noted that the Federal Court never concluded that “glen” was a mark within the meaning of section 10; nor was any evidence filed to support that finding. The Association argued that the word “glen” can be considered as a “mark” under section 10.
The FCA dismissed the Association’s argument, as Canadian law dictates trade-marks are not to be dissected into their individual parts. Even if a trade-mark contains a word that is a prohibited mark, the trade-mark will still be registrable if the word is used in combination with a distinctive element such that the prohibited mark does not dominate. The FCA noted that “glen”, being a common word and component of numerous registered trade-marks, is at best weakly distinctive.
Accordingly, FCA concluded that the word “glen” was not a mark within the meaning of Trade-marks Act s. 10 and therefore was not a prohibited mark. The FCA also found that even if “glen” was a prohibited mark, “glen” does not dominate the GLEN BRETON trade-mark. Accordingly, the FCA ordered the allowance of the GLEN BRETON application for registration.
A further appeal?
There are reports that the Association is considering a further appeal to the Supreme Court of Canada. The appeal deadline is March 23, 2009. The Association had not appealed as of this post. Watch this space for updates on whether the Association files an appeal with the Supreme Court of Canada.
The FCA’s decision is authority that the word “glen” can be included in trade-marks for non-Scottish whisky sold in Canada. Regardless, whisky proprietors should still conduct clearance searches to determine whether a trade-mark containing “glen” is available for use and registration in Canada.