Leave to appeal refused in GLENN OAKS Case

In Scotch Whisky Association v De Witt ([2008] FCA 73, February 14 2008), the Federal Court has refused leave to appeal against a decision of a single judge of the court in relation to the GLENN OAKS mark. The case reviews the criteria for leave to appeal in unsuccessful trademark oppositions.

At first instance, the trial judge dismissed the Scotch Whisky Association's appeal from a decision of a delegate of the registrar of trademarks allowing the registration of the mark GLENN OAKS for bourbon products and other goods in Class 33 of the Nice Classification (for further details please see "GLENN OAKS Case highlights significance of consumer habits").

Despite the fact that the trial judge had ordered that the Class 33 description of goods be restricted to explicitly exclude products labelled only as 'whisky' or 'whiskey', the association maintained that the use of the GLENN OAKS mark in respect of bourbon products was likely to mislead or deceive consumers as it was evocative of Scotland and thus suggested that the product was a whisky, and not a bourbon.

The association required leave to appeal under Section 195(2) of the Trademarks Act 1995 (Cth).

At first instance, the association relied on the following grounds to demonstrate that the use of the GLENN OAKS mark was deceptive or confusing when used with respect to bourbon:

• The use of the GLENN OAKS mark was contrary to law pursuant to Section 42(b) of the act since it would:
  
  
  • contravene either Section 52 or Section 53 of the Trade Practices Act 1974 (Cth);
    
    
  • constitute passing off; or
    
    
  • contravene state legislation such as the Food Act 1984 (Vic);
    
    
• The term 'glenn' connoted a Scottish origin under Section 43 of the act; and
  
  
• Pursuant to Section 60 of the act, there was a family of 'glen'-prefixed marks used with respect to whisky products.

With regard to the issue of whether leave to appeal should be granted, the court applied the two-limb test of the Full Federal Court in Décor Corp Pty Ltd v Dart Industries Inc ([1991] FCA 65). The Décor test requires that a court consider whether:

• there is sufficient doubt about the correctness of the approach taken by the trial judge to warrant reconsideration of the matter by a full court; and
  
  
• substantial injustice would result if leave to appeal were refused.

In relation to the first limb, the court found that the grounds pursuant to Section 60 had been adequately dealt with at first instance. However, the court found that the question of leave to appeal was relevant to the grounds under Sections 43 and 42(b) as the trial judge had not sufficiently dealt with these aspects of the association's case. In particular, it appeared that the case with respect to Section 42(b) had not been dealt with at all at first instance.

Under Section 42(b) of the act, the association argued that the use of the GLENN OAKS mark was contrary to law - in particular, Section 16 of the Food Act, which requires compliance with the Australia and New Zealand Food Standards Code, including Standard 2.7.5 with respect to geographical indications. The standard requires that a geographical indication must not be used in relation to an alcoholic spirit, unless the spirit was produced in the country, locality or region indicated. The association argued that GLENN OAKS was a geographical indication which implied that the product was a whisky and originated from Scotland.

Although the court doubted the correctness of the trial judge's approach with regard to certain aspects of the association's case pursuant to Sections 42(b) and 43, it held that under the second limb of the Décor test, no substantial injustice would result if leave to appeal were refused.

Leave was therefore refused on the basis that, under Section 88 of the act, the association would be able to apply for the cancellation of the registration of the GLENN OAKS mark once it was registered. Therefore, there would be no substantial injustice to the association. However, dealing with a case like this via a cancellation action is a costly solution.

Lisa Ritson and Elizabeth Ireland, Blake Dawson, Sydney