Canadian distiller wins right to use GLEN BRETON mark


In Glenora Distillers International Ltd v Scotch Whisky Association (January 22 2009), the Federal Court of Appeal has held that a Canadian distiller could use the trademark GLEN BRETON for its whisky.

Glenora Distillers International Ltd (located in Cape Breton, Nova Scotia, Canada) uses the traditional Scottish method to distil its single malt whisky, which gives its product the taste, character and aroma of Scotch whisky. However, Glenora is not permitted to call its whisky 'Scotch', since this is a protected geographical indication.
Glenora applied for the registration of the trademark GLEN BRETON for use in association with its single malt whisky. The trademark application was opposed by the Scotch Whisky Association.
The Trademark Opposition Board rejected the opposition. On appeal to the trial division of the Federal Court, the decision was reversed and the trademark application was rejected. The court found that the word 'glen' had become recognized through ordinary and good-faith commercial use as designating the geographical origin of whisky. Therefore, registration of the mark would be contrary to Section 10 of the Trademarks Act (for further details please see "'Glen' means 'scotch' in Canada, says Federal Court"). Glenora appealed to the Federal Court of Appeal.
Section 10 of the act prohibits the adoption and use of a mark that has, by ordinary and good-faith commercial usage, become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services. Section 12 of the act prohibits the registration of a trademark that is deceptively misdescriptive of the character or quality of the goods.
In this particular matter, the Scotch Whisky Association placed very little reliance on whether the trademark was deceptively misdescriptive. Rather, the association focused its efforts on Section 10 of the act and attempted to prohibit registration of the GLEN BRETON mark and all other trademarks in respect of whisky that included the word 'glen'.
The court rejected the opposition, stating that the totality of a trademark must be considered when Section 10 is applied. It found that although the word 'glen' was a common word and formed part of numerous registered trademarks, it was not a prohibited word in respect of whisky. Moreover, the court stated that even if a particular word is prohibited, a trademark would still be registrable if the word is used in combination with a distinctive element such that the prohibited word does not dominate.
The court went on to state that if the association had been correct in its submissions (ie, that the registration of a mark including the word 'glen' was prohibited by Section 10), then none of the members of the association would be entitled to continue to use their own 'glen'-prefixed trademarks.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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