We initially dealt with this case in our May 2008 newsletter.

The Facts

Glenora Distillers International Ltd. applied for the trade mark GLEN BRETON for a single malt whiskey. The Scotch Whiskey Association opposed the application on the basis, among other things, that the adoption of the mark was prohibited because the word GLEN had by ordinary and bona fide commercial usage become recognized in Canada as designating goods of a particular brand and origin, namely whiskey from Scotland.

Section 10

Section 10 of the Trade-marks Act (the "Act") provides that where a 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 that is likely to mislead. In addition, no one may adopt or use any mark so nearly resembling the mark as to be likely to be mistaken for it.

This section is designed to prohibit the adoption of such marks as the hallmark for silver and such other well-known marks indicative of quality or origin. Such a mark or marks which resembles it should be open for use by any party and not available for adoption as a trade mark by any one person.

The Opposition

When the opposition was heard by the Trade-marks Opposition Board, the Hearing Officer concluded that Canadian users and purchasers of whiskey had not been educated to associate the word "GLEN" solely with scotch whiskey. As a result, the opposition was dismissed.

The Federal Court

The Scotch Whiskey Association appealed to the Federal Court and filed a significant amount of new evidence to show that the word "GLEN" was associated with scotch. As a result, the Court concluded that the GLEN component of the trade mark had become recognized in Canada as designating the place of origin of the whiskey.

The Federal Court of Appeal

Not to be outdone, Glenora Distillers appealed to the Federal Court of Appeal, who found that the trial judge had made an error of law in concluding that GLEN was a mark within the meaning of section 10 of the Act. The Court found that "GLEN" standing alone had never been used as a trade mark in Canada for any product. It has always been used as a prefix for numerous trade marks associated with Scotch whiskey, most famously, GLENFIDDICH, GLENMORANGIE, GLENLIVET.

In reaching its conclusion, the Court said that it was inappropriate to segment previously registered marks or the appellant's trade mark GLEN BRETON. Such a conclusion is consistent with the refusal on the part of courts in general to dissect trade marks when considering the rights associated with them. The totality of a trade mark must be considered in giving effect to section 10. Even when a particular word is prohibited, if the word is used in combination with a distinctive element such that the prohibited word does not dominate, the trade mark may still be registrable.

Conclusion

The Federal Court of Appeal's approach seems to be an appropriate interpretation of Section 10.