Glenora Distillers International Ltd. applied for the trade mark
GLEN BRETON for a single malt whiskey. The Scotch Whiskey
Association opposed the application on the basis, among other
things, that the adoption of the mark was prohibited because the
word GLEN had by ordinary and bona fide commercial usage
become recognized in Canada as designating goods of a particular
brand and origin, namely whiskey from Scotland.
Section 10 of the Trade-marks Act (the "Act")
provides that where a 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 that is likely to mislead. In
addition, no one may adopt or use any mark so nearly resembling the
mark as to be likely to be mistaken for it.
This section is designed to prohibit the adoption of such marks
as the hallmark for silver and such other well-known marks
indicative of quality or origin. Such a mark or marks which
resembles it should be open for use by any party and not available
for adoption as a trade mark by any one person.
When the opposition was heard by the Trade-marks Opposition
Board, the Hearing Officer concluded that Canadian users and
purchasers of whiskey had not been educated to associate the word
"GLEN" solely with scotch whiskey. As a result, the
opposition was dismissed.
The Federal Court
The Scotch Whiskey Association appealed to the Federal Court and
filed a significant amount of new evidence to show that the word
"GLEN" was associated with scotch. As a result, the Court
concluded that the GLEN component of the trade mark had become
recognized in Canada as designating the place of origin of the
The Federal Court Of Appeal
Not to be outdone, Glenora Distillers appealed to the Federal
Court of Appeal, who found that the trial judge had made an error
of law in concluding that GLEN was a mark within the meaning of
section 10 of the Act. The Court found that "GLEN"
standing alone had never been used as a trade mark in Canada for
any product. It has always been used as a prefix for numerous trade
marks associated with Scotch whiskey, most famously, GLENFIDDICH,
In reaching its conclusion, the Court said that it was
inappropriate to segment previously registered marks or the
appellant's trade mark GLEN BRETON. Such a conclusion is
consistent with the refusal on the part of courts in general to
dissect trade marks when considering the rights associated with
them. The totality of a trade mark must be considered in giving
effect to section 10. Even when a particular word is prohibited, if
the word is used in combination with a distinctive element such
that the prohibited word does not dominate, the trade mark may
still be registrable.
The Federal Court of Appeal's approach seems to be an
appropriate interpretation of Section 10.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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