Federal Court Finds that "Glen" Means Whisky is from Scotland

In Scotch Whisky Association v. Glenora Distillers International Ltd. (2008 FC 425), Justice Harrington of the Federal Court found that the word "glen" used in association with whisky has become recognized in Canada as designating that the whisky is made in Scotland, and so whisky producers from elsewhere are prohibited from adopting it as a trade-mark. Glen Breton is a premium single malt whisky made by Glenora in Nova Scotia. Glenora applied to register GLEN BRETON as a trade-mark. The Scotch Whisky Association opposed the application. In its opposition, the Association argued that the mark was deceptively misdescriptive of the place of origin of the whisky, and that the word "glen" designates that whisky is from Scotland. The Registrar rejected the opposition and the Association appealed. The Association filed significant additional evidence in the appeal before Justice Harrington. The additional evidence showed that, in 2000 when Glenora applied for the trade-mark, all whiskies sold in Canada whose names included "glen" were Scotch whiskies and all but one were single malts. It also showed that about 59% of all sales of single malts were for products whose names included "glen". There was also what the Court characterised as evidence of actual confusion, including drink lists from bars and restaurants that categorized Glen Breton as a single malt Scotch. Justice Harrington rejected the argument that GLEN BRETON was deceptively misdescriptive. However, he found that section 10 of the Trade-marks Act ("the Act") prohibited the adoption of "glen" as a trade-mark because it had "by ordinary and bona fide commercial usage" become recognized in Canada as designating the place of origin to be Scotland. Glenora has said that it intends to appeal the decision. It will continue using GLEN BRETON for now. Glenora, in its labelling and advertising, makes it very clear that its product is not Scotch. The fact that Glen Breton is Canada's only single malt whisky is one of the company's marketing points. The LCBO, Ontario's government liquor monopoly, categorizes Glen Breton as a "Canadian whisky" on its website. This is a designation that Glenora is probably prohibited from using itself under the Food and Drug Regulations, as Canadian whisky is typically rye. Glenora calls its product "Canadian single malt whisky." For the full decision, see: http://decisions.fct-cf.gc.ca/en/2008/2008fc425/2008fc425.html For a related news story, see: http://www.nationalpost.com/news/canada/story.html?id=428836 Summary by: Tom Feather