A Nova Scotia distillery recently got the green light from the
FCA to register its trade-mark "Glen Breton" for use in
association with a single-malt whisky, over the objections of The
Scotch Whisky Association. In Glenora Distillers International
Ltd. v. The Scotch Whisky Association, the FCA
overturned a lower court ruling and restored the Trade-Marks
Opposition Board's (TMOB) decision that had allowed
Glenora's trade-mark application.
Glenora, a distillery located in Cape Breton Nova Scotia,
applied to register the trade-mark Glen Breton for use in
association with its single malt whisky. The Scotch Whisky
Association opposed the mark on the basis that the use of
"glen"-prefixed marks in association with several
well-known single malt Scotches resulted in an association between
the word "glen" and whiskies distilled in Scotland.
The Association claimed that the mark was prohibited by Section
10 of the Trade-marks Act, which provides:
Where any 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 likely to mislead, nor shall any
person so adopt or so use any mark so nearly resembling that mark
as to be likely to be mistaken therefor.
"Glen" = Scotch?
The TMOB dismissed the Association's opposition. It found
that although "glen"-prefixed marks were in fact used by
Scotch whisky distillers, their use was not widespread enough to
associate the word "glen" with Scotch whiskies.
Therefore, "glen" had not become recognized through
"ordinary and bona fide commercial use" as designating
the geographic origin of whisky, and was not prohibited by Section
The Scotch Whisky Association appealed the TMOB's decision
to the Federal Court and filed additional evidence on whisky sales
in Canada. After reviewing the evidence, the Federal Court judge
found that there was no use of a "glen" whiskey that was
not a Scotch. He also found confusion in Canada — people
thought Glen Breton was a Scotch. The confusion was due to use of
word "glen," and not its flavour and aroma.
The Federal Court judge ultimately concluded that the word
"glen" had, by ordinary and bona fide commercial use,
become recognized in Canada as designating Scotch whisky, and was
thus a prohibited mark pursuant to Section 10. It overturned the
A Mark ≠ Trade-Mark?
On appeal, the FCA found that the Federal Court judge had erred
in law by failing to consider whether the word "glen,"
having only previously been used as part of various registered
trade-marks, is in fact a "mark" within the meaning of
Section 10. In fact, a "mark" is not necessarily
synonymous with a "trade-mark."
There was no authority before the FCA that a segment of a
trade-mark could stand alone as a mark. Rather, the law is that in
assessing a trade-mark (albeit to determine whether it is
distinctive), the trade-mark must be looked upon as a whole. It is
not proper to dissect it. It is the totality of the mark,
combination of the marks as a whole, effect or idea of the whole
that is to be compared.
The FCA found that the word "glen" was a common word
forming part of numerous registered trade-marks. At best,
"glen" was a weakly distinctive component of those
trade-marks and could not be segmented to form a mark on its
Furthermore, even if "glen" could be considered a
mark, it did not dominate "Glen Breton." The totality of
a trade-mark must be considered in the Section 10 analysis.
As a result, the FCA allowed the appeal and authorized the mark
to be registered.
McCarthy Tétrault Notes:
This case highlights the importance for a trade-mark owner to
choose the optimal strategy in protecting those rights. Although
the Association was unsuccessful in opposing the Glenora trade-mark
on the basis of Section 10 — a relatively obscure
provision of the Trade-marks Act — arguably,
they could have been successful had they also brought a separate
passing off action. The common law tort of passing off protects the
goodwill of a trader from a misrepresentation that causes damage to
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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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