GLENN OAKS Case highlights significance of consumer habits

In Scotch Whisky Association v De Witt ([2007] FCA 1649, November 2 2007), the Federal Court of Australia has held that the use of the mark GLENN OAKS on a bourbon product is not deceptive, misleading or confusing.

The Scotch Whisky Association appealed from a decision of a delegate of the registrar of trademarks allowing the registration of the mark GLENN OAKS in Class 33 of the Nice Classification (which includes scotch whisky and bourbon). The association opposed the registration on the following grounds:

• The use of the mark GLENN OAKS was likely to deceive or confuse consumers;
  
  
• GLENN OAKS was deceptively similar to other trademarks that had acquired a reputation in Australia for scotch whisky; and
  
  
• The use of the mark was contrary to law.

By way of context, the court made findings of fact in relation to the distinction between whisky and bourbon and found differences in the ingredients, distilling process, country of origin, tastes and alcoholic content.

Further, despite the fact that some bourbon products are labelled 'Bourbon Whiskey' or 'Tennessee Whiskey', the court also determined that there was a clear market distinction between scotch whisky and bourbon due to the fact that consumers:

• have different habits and tastes; and
  
  
• read product labels and are therefore aware of the products that they are purchasing.

The first limb of the association's case was that the use of the mark GLENN OAKS was likely to deceive or cause confusion in violation of Section 43 of the Trademarks Act 1995 because of the connotations of the 'glenn' component of the mark - namely, that 'glenn' is evocative of Scotland and Scotland is renowned for whisky, thereby suggesting that the product is Scottish and/or a whisky.

The court found that there was no "real tangible danger of deception or confusion", as:

• the term 'glenn' would cause most consumers to think of a person's name, and the Scottish and/or whisky connotations were not strong enough to cause deception or confusion among consumers; and
  
  
• consumers of bourbon products review labels and would see that the product is a bourbon made in the United States.

The second limb of the association's argument was that the GLENN OAKS mark was deceptively similar to other marks which had acquired a reputation in the Australian market under Section 60 of the act. The association identified 13 whisky brands that were or had been available for sale in Australia with 'glen' in their name, three of which were especially well known (ie, GLENFIDDICH, GLENLIVET and GLENMORANGIE).

The court considered the elements of the GLENN OAKS mark in comparison to the three dominant scotch whisky marks. It conceded that the 'glen' component of the marks was substantially the same. However, there was no deceptive similarity as 'fiddich', 'livet' and 'morangie' were vastly different aurally, visually and in meaning from 'oaks'.

Secondly, the association contended that there was likely to be confusion due to the existence of a family of 'glen'-prefixed marks in the market. However, this argument was also unpersuasive, as the association was not the owner of the family of 'glen'-prefixed marks and the family of marks is owned by different parties.

Thirdly, the association argued that the use of the mark was contrary to law under Sections 52 and 53 of the Trade Practices Act 1974 and the common law of passing off, as it was misleading and deceptive. The court dismissed these claims on the same grounds as the arguments based on the Trademarks Act.

Although the association's application was dismissed, the court nevertheless ordered that the Class 33 goods be modified to "scotch whisky and bourbon (other than bourbon that is labelled only as 'whisky' or 'whiskey')".

Lisa Ritson and Elizabeth Ireland, Blake Dawson, Sydney