The Federal Court of Appeal recently reversed a decision of the Trial Division and held that GLEN BRETON was a registrable trade mark for whisky produced in Canada. The Trial Division had concluded that "GLEN," by virtue of its use as a component of, inter alia, GLENLIVET, GLENMORANGIE and GLENFIDDICH, had, by ordinary and bona fide commercial usage, become recognized in Canada as designating whisky from Scotland and that GLEN BRETON was therefore unregistrable in association with whisky produced in Canada.

The Court of Appeal's decision was based on its conclusion that a portion of a mark is not a "mark" for the purposes of section 10 of the Canadian Trade-marks Act. Section 10 of the Canadian Trade-marks Act prohibits the adoption, or use in a way likely to mislead, of any "mark" that 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 the wares or services in question, or others of the same general class. It also prohibits the adoption or use of any mark so nearly resembling that mark as to be likely to be mistaken therefor. The Court of Appeal held that the evidence did not establish that "GLEN" was used as a mark, but rather only as a portion of the marks GLENLIVET, GLENMORANGIE and GLENFIDDICH, for example, and that the prohibition of section 10 did not therefore apply.

Glenora, a distiller located in Cape Breton, Nova Scotia, has been distilling single malt whisky since 1990, claiming to use the traditional Scottish method. It claims the product has the taste, character and aroma of a scotch whisky; however, Glenora is not permitted to call its whisky "scotch" as "scotch whisky" is a protected geographical indication which may only be used in association with whiskies produced in Scotland. Ironically, Glenora is also not entitled to call its product Canadian whisky as it does not have the taste, character and aroma associated with Canadian whisky as required by the Food and Drug Regulations. Thus, the Glenora product is simply called single malt whisky, even though its marketing has capitalized greatly on the similarities between this whisky and Scotch whiskies and Glenora states that its product is in direct competition with single-malts distilled in Scotland.

The Scotch Whisky Association had objected to Glenora using the prefix GLEN for whisky not produced in Scotland as the Association claims that the use of GLEN-prefixed marks in association with several well-known single malt scotch whiskies, including GLENLIVET, GLENMORANGIE and GLENFIDDICH, has resulted in an association between the word GLEN and whisky distilled in Scotland. The Trial Division, per Harrington J, had found on the evidence that there was actual confusion in the marketplace in relation to whether GLEN BRETON was a scotch whisky and he further found that the confusion was as a result of the use of the word GLEN.

While not disturbing the factual findings below, the Federal Court of Appeal noted that the word GLEN standing alone has never been used as a trade mark in Canada for any product and held that there was no authority before the Court standing for the proposition that a segment of a trade mark can stand alone as a mark.

The Court noted that in all of the section 10 authorities to which it was referred, the words in question were inherently descriptive of the character or quality of the products being sold. The Court noted that it would be possible for a mark that is not inherently descriptive to become a designator mark through ordinary and bona fide commercial usage. The Court stated, however, that this was an unusual section 10 case, in that the Scotch Whisky Association was essentially seeking to establish a monopoly over a word that was not inherently descriptive, for a group of traders, when it was not clear that any of the association’s members incorporated the word into their trade marks for the purpose of designating their whiskies as being from Scotland. The Court of Appeal further opined that if GLEN were a mark for the proposes of section 10, then the use of the word GLEN by the members of the Scotch Whisky Association would be contrary to the plain wording of the provision, which states that no person shall adopt a prohibited mark as a trade mark, and that therefore success in the appeal would jeopardize the trade marks of many of the Association’s members.

Counsel for the Scotch Whisky Association had maintained at the hearing that, even if GLEN were a section 10 mark, it could be used by any producer as part of a trade mark for whisky produced in Scotland, as the relevant prohibitions in section 10 are against the adoption of GLEN itself as a trade mark in respect of whisky (which no producer had done) or the use of the word GLEN in a way likely to mislead as to the quality and origin of the whisky. It was the latter prohibition that the Association relied on and which it claimed could not affect the use of the word GLEN by producers of whisky that is in fact Scotch Whisky.

In the result, the Court of Appeal allowed the appeal and directed the Registrar to allow Glenora’s application for registration of GLEN BRETON. The Scotch Whisky Association has requested leave to appeal to the Supreme Court of Canada.