'Glen' means 'scotch' in Canada, says Federal Court

In Scotch Whisky Association v Glenora Distillers International Ltd (2008 FC 425, April 3 2008), the Federal Court has held that the trademark GLEN BRETON is unregistrable pursuant to Sections 12(1)(e) and 10 of the Trademarks Act.

Glenora Distillers International Ltd (which is located in Glenville, Cape Breton, Nova Scotia) applied to register the trademark GLEN BRETON based on proposed use in Canada in association with single malt whisky. The Scotch Whisky Association opposed the application on the basis that, among other things:

• the word 'glen' had become recognized as designating scotch whisky only; and
  
  
• the trademark GLEN BRETON was not registrable as Glenora's whisky was produced in Canada.

The Trademarks Opposition Board refused the opposition, concluding that Canadian consumers had not been educated to associate the word 'glen' solely with scotch whisky. The Scotch Whisky Association appealed.

The Federal Court allowed the appeal, holding that the word 'glen' had become recognized in Canada as designating scotch whisky only. There was no evidence before the court that there had ever been whisky sold in Canada, apart from scotch whisky, with the word 'glen' as part of its name. Moreover, 'glen' had been used in association with Scotch whisky sold in Canada (eg, under the mark GLENLIVET) since at least 1888. In 2000, the year during which the application for GLEN BRETON was filed, 22 different 'glen' scotch whiskies were being sold in Canada.

Therefore, the court held that GLEN BRETON was not registrable under Sections 12(1)(e) and 10 of the Trademarks Act, which prohibit the registration of marks that, by ordinary and bona fide commercial usage, have become recognized in Canada as designating, among other things, the place of origin of goods of the same general class. The act also prohibits:

• the use of such marks in a way that is likely to mislead; and
  
  
• the use of any mark so nearly resembling such marks as to be likely to be mistaken for them.

The court noted that 'glen' is defined as a narrow valley and that, according to the president of Glenora, Glen Breton whisky could be referred to as coming from a 'glen'. The court rejected evidence submitted by Glenora to the effect that the word 'glen', either as a prefix or as a standalone word, was not exclusively associated with the sale of scotch whisky in Canada. Glenora alleged that whisky had been produced in the 1980s in British Columbia under the mark GLENOGOPOGO. However, there was no evidence before the court that it was ever sold in Canada. Glenora also alleged that gin was sold in Canada under the mark GLENMORE. However, the court noted that the Scotch Whisky Association is indifferent to 'glen' being used in association with spirits other than whisky. Finally, Glenora contended that an American distillery, Glenmore, sold Kentucky straight bourbon whisky under the name Glenmore in the United States and bourbon under the name Kentucky Tavern in Canada. However, the last recorded Canadian sales of that whisky were in 1985.

The court appears to have been influenced by drink menus from bars and restaurants in Canada which list Glen Breton whisky as a single malt scotch. According to the court, a consumer who thought that he or she was ordering a new single malt scotch whisky would not know that something else was being served. The court commented that confusion arose from the word 'glen', not from the fact that Glenora's product is a single malt whisky. The court concluded that:

"Cape Bretoners, or Capers, are rightly proud of their [Scottish] heritage and are entitled to evoke it. However, it is too late to use the word 'glen'".

Jennifer McKay, Gowling Lafleur Henderson LLP, Ottawa