Single Malt Whisky

Single Malt Whisky

Glenora Distillers has won a trademark dispute before the FCA over the name of their Canadian single malt whisky, Glen Breton. The Scotch Whisky Association argued that the prefix “glen” has become recognized in Canada as designating a single malt whiskey distilled in Scotland and so s.10 of the Trade-marks Act should operate to prevent Glenora’s registration of Glen Breton.

By way of background, Glen Breton is a single malt whisky made in Nova Scotia using the traditional Scottish method. It competes directly with scotch whiskies but cannot be marketed as a “Scotch” because that term is a protected geographical designation which can only be used in reference to whiskies produced in Scotland.

The Trade-marks Opposition Board sided with Glenora in finding that “glen” had not become recognized as designating a whisky’s geographic origin. However, the Federal Court was of the opposite opinion and in fact found that there was actual confusion in the marketplace.

In the FCA’s decision of January 22nd, Sexton J.A. found in favour of Glenora. However, the basis for the FCA’s decision did not lie in deciding whether or not “glen” had become recognized as indicating a Scottish origin but on a finding that “glen” was not in fact a “mark” within the meaning of s.10.

S.10 prohibits the adoption of marks that have become recognized in Canada through commercial usage as designating the kind, quality, quantity, destination, value, place of origin or date of production of wares or services.

The Court found that “[t]he word ‘glen’, standing alone, has never been used as a trademark in Canada, for any product” and, only being a segment of any registered trademark, “glen” alone could not therefore be a mark under s.10. To reach this conclusion, the court relied on authorities outside the context of s.10 which state “that trademarks should not generally be dissected and analyzed syllable by syllable”.

While acknowledging that the term “mark”, used in s.10, is broader than the term “trademark”, the Court remained unpersuaded that a segment of a trademark can stand alone as a mark.

After making this argument, Sexton J.A. went on to comment on the unusualness of attempting to use s.10 in this way. Here, a monopoly was being sought by a group over a word, which is not inherently descriptive, where it is unclear that anyone using the prefix had done so for the purpose of indicating that their whiskies were from Scotland.

He went on to note that should the prefix “glen” be found to be a mark prohibited under s.10, the language of s.10 would then jeopardize existing whisky trademarks that incorporate “glen”, which is what the Scotch Whisky Association is trying to protect in the first place. This rejected the notion that s.10 would not apply where the use of the indicator was true.

While the outcome seems just, we are left with the somewhat unsatisfactory outcome of having a lower court ruling stating that the use of “glen” is causing actual confusion in the marketplace as to the origin of whisky and a higher court ruling saying that there is no relief available because “glen” has only ever been used as a segment of a trademark. Thus the policy debate over the degree to which and method by which we want to be awarding monopolies over marks with geographic connotations continues on.