Australia: Trademark Update: "Glenn" Is A Person´s Name, Not A Kind Of Scotch Whisky!

The Australian Federal Court has held recently that the use of the mark "Glenn Oaks", if used on bourbon products, was not likely to mislead or confuse consumers because even though it is very common for makers of Scotch Whisky to include the prefix "Glen" in their trademarks, the word "Glenn" was much more likely to be associated with the name of a person, not a type of scotch whisky. The Governor of our Reserve Bank, one Glenn Stevens, would surely agree.

The Scotch Whisky Association appealed against the delegate's decision to allow the trade mark "Glenn Oaks" to be registered in relation to the following goods:

The Association's argument was that the trade mark should not extend to bourbon, because essentially the use of the word "Glen" connotes a product that has been made in Scotland, whilst of course bourbon is a quite different "whiskey" that is made in the USA, and that therefore consumers were likely to be deceived or confused.

The Court disagreed. It felt that in general people who were likely to purchase these products would associate the word "Glenn" with a person's name rather than with a "place denoting Scottish origin", and in any event, the labels would also contain many other references to the nature of the product and its origin, being the USA, rather than Scotland, Further, these types of purchases were not considered to be impulse buys, but to involve a degree of consideration by the purchaser before purchase, including reading the label and, if necessary, making enquiries of salespeople.

This was despite the plethora of single malt Scotch whiskies that have the prefix "Glen" in their name, such as Glen Keith, Glen Moray, Glen Parker, Glen Turner, Glenfiddich, Glenlivet and Glenmorangie (there are 12 altogether that are sold in Australia). I'll refer to them from now on as the "Glen" marks.

The mark "Glenn Oaks" was not considered to be deceptively similar to any of the "Glen" marks that had acquired a significant reputation in Australia, namely Glenfiddich, Glenlivet and Glenmorangie. This was because whilst the first feature in the marks namely "Glenn" and "Glen" is substantially the same, the second feature in each of the marks is quite visually and aurally different.

The Association also tried to argue its case on the "family of marks" basis, which suggests that if there is a "family" of similar marks uses the same prefix or suffix, such as "Glen" in this case, then the use of that one element by another trader would be likely to deceive or confuse.

Unfortunately for the Association, the court felt that a crucial condition for the application of the "family" cases was that all of the "family" marks were owned by one proprietor. The Association of course, as a supplier's representative, was not the proprietor of any of the "Glen" marks. To the contrary, as the "Glen" marks are all owned by different producers, the court felt that this in fact "cuts in favour of the Glenn Oaks mark" as consumers are in fact likely to be "more attuned to the second element in the relevant mark" in order to distinguish the products from each other.

The Association's appeal was dismissed, and the Association was ordered to pay the Respondent's costs of the appeal. The only concession to the Applicant was that the statement of goods and services was amended slightly to read:

"Class 33: Scotch whisky, bourbon (other than bourbon that is labelled only as "whisky" or "whiskey"), vodka, dark rum, white rum, ouzo, tequila, gin, liqueurs, and all other spirits in this class except for whisky that is not produced in Scotland."(Emphasis added)

I think the only thing left to say is……..Slainte Mhath! Here's tae ye!

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