A Nova Scotia distillery recently got the green light from the FCA to register its trade-mark "Glen Breton" for use in association with a single-malt whisky, over the objections of The Scotch Whisky Association. In Glenora Distillers International Ltd. v. The Scotch Whisky Association, the FCA overturned a lower court ruling and restored the Trade-Marks Opposition Board’s (TMOB) decision that had allowed Glenora’s trade-mark application.

Glenora, a distillery located in Cape Breton Nova Scotia, applied to register the trade-mark Glen Breton for use in association with its single malt whisky. The Scotch Whisky Association opposed the mark on the basis that the use of "glen"-prefixed marks in association with several well-known single malt Scotches resulted in an association between the word "glen" and whiskies distilled in Scotland.

The Association claimed that the mark was prohibited by Section 10 of the Trade-marks Act, which provides:

Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.

"Glen" = Scotch?

The TMOB dismissed the Association’s opposition. It found that although "glen"-prefixed marks were in fact used by Scotch whisky distillers, their use was not widespread enough to associate the word "glen" with Scotch whiskies. Therefore, "glen" had not become recognized through "ordinary and bona fide commercial use" as designating the geographic origin of whisky, and was not prohibited by Section 10.

The Scotch Whisky Association appealed the TMOB’s decision to the Federal Court and filed additional evidence on whisky sales in Canada. After reviewing the evidence, the Federal Court judge found that there was no use of a "glen" whiskey that was not a Scotch. He also found confusion in Canada — people thought Glen Breton was a Scotch. The confusion was due to use of word "glen," and not its flavour and aroma.

The Federal Court judge ultimately concluded that the word "glen" had, by ordinary and bona fide commercial use, become recognized in Canada as designating Scotch whisky, and was thus a prohibited mark pursuant to Section 10. It overturned the TMOB’s decision.

A Mark ≠ Trade-Mark?

On appeal, the FCA found that the Federal Court judge had erred in law by failing to consider whether the word "glen," having only previously been used as part of various registered trade-marks, is in fact a "mark" within the meaning of Section 10. In fact, a "mark" is not necessarily synonymous with a "trade-mark."

There was no authority before the FCA that a segment of a trade-mark could stand alone as a mark. Rather, the law is that in assessing a trade-mark (albeit to determine whether it is distinctive), the trade-mark must be looked upon as a whole. It is not proper to dissect it. It is the totality of the mark, combination of the marks as a whole, effect or idea of the whole that is to be compared.

The FCA found that the word "glen" was a common word forming part of numerous registered trade-marks. At best, "glen" was a weakly distinctive component of those trade-marks and could not be segmented to form a mark on its own.

Furthermore, even if "glen" could be considered a mark, it did not dominate "Glen Breton." The totality of a trade-mark must be considered in the Section 10 analysis.

As a result, the FCA allowed the appeal and authorized the mark to be registered.

McCarthy Tétrault Notes:

This case highlights the importance for a trade-mark owner to choose the optimal strategy in protecting those rights. Although the Association was unsuccessful in opposing the Glenora trade-mark on the basis of Section 10 — a relatively obscure provision of the Trade-marks Act — arguably, they could have been successful had they also brought a separate passing off action. The common law tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to that goodwill