The Federal Court of Appeal concluded in this case that the word “Glen” is not a prohibited mark under section 10 of the Trade Marks Act.
Section 10 of the Trade Marks Act provides that “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.”
The Federal Court had allowed the Scotch Whisky Association’s appeal from a decision of the Trade Marks Opposition Board and held that Glenora was not entitled to register the trade mark Glen Breton for use in association with whisky, as it was a mark prohibited by section 10 of the Trade Marks Act.
The Federal Court of Appeal found that “Glen” alone was never registered as a mark. Glen forms part of several trade marks such as Glen Livet. Therefore it was not shown that “Glen” was a mark and cannot be prohibited under section 10. Also, if “Glen” was prohibited, the Scotch Whisky Association members could not use it either.