The Mill Liquor Save applied to register the trade mark MACGOWANS, for the specification 'whisky flavoured spirits; none of the foregoing being whisky'.
The Mill uses the trade mark on its 'light spirit', a tan-coloured, 13.9% alcohol product, which sells for $9.99.
The Scotch Whisky Association opposed the registration of this mark, arguing that consumers would be deceived or confused as to the origin or nature of the goods by the use of MACGOWANS on whisky flavoured spirits. The Association also argued that The Mill had no intention to use the mark on the goods it had applied for, given that the MACGOWANS product is not properly classified as a spirit.
The Assistant Commissioner allowed the registration of MACGOWANS, deciding that consumers would not be deceived or confused by the use of the mark. The Assistant Commissioner also held that the MACGOWANS product constituted a spirit when that word is given its ordinary meaning.
The Association successfully appealed.
In the High Court, Justice Kós found that The Mill had no intention to use the mark on whisky flavoured spirits. This was because at 13.9%, the product could not be classified as a spirit. A 'spirit' is a liquor with at least 37% alcohol (statutory meaning) or is a strong liquor (common meaning). The Mill's MACGOWANS product is not such a product.
Justice Kós, therefore, ordered that the mark not proceed to registration and awarded costs to The Association.
On the issue of the misleading nature of the MACGOWANS mark, Justice Kós accepted that whisky was associated with Scotland, but that Mac-names are ubiquitous. He disregarded other Scottish indicia on the MACGOWANS product, considering it irrelevant to the trade mark opposition. The Judge was significantly influenced by the different price point between a whisky flavoured spirit not being whisky (selling for a low price, such as $9.99) and even the cheapest genuine Scotch Whisky.
He concluded that, 'by a relatively narrow margin', a substantial number of consumers would not be confused by the use of the MACGOWANS mark on whisky flavoured spirits.