Riding through the Glen to the Supreme Court of Canada?

Readers may know about the recent decision of the Federal Court of Appeal concerning Glenora Distillers, which is a Canadian company located in located in Glenville, next to the community of Glenora Falls, in Nova Scotia, Canada. It makes a “single malt whisky” called GLEN BRETON and has marketed this product as “being like a single malt Scotch in every thing but name.”

Glenora was taken to court by the powerful Scotch Whisky Association (SWA), which doesn't like the use of the word GLEN in association with whisky, unless it is used with single malt Scotch whisky. The SWA invoked the rarely used s. 10 of the Trade-marks Act which provides that:

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.

The SWA succeeded before Justice Harrington in the Federal Court, but this decision was reversed on appeal - and quite properly so in my view. S. 10 simply doesn't apply in this situation. Justice Sexton of the Federal Court of Appeal correctly noted that many of the SWA members’ trade-marks containing GLEN would be in jeopardy if SWA’s argument on s. 10 had actually prevailed.

It is therefore somewhat surprising that the SWA has now sought leave to appeal the FCA decision to the SCC. It will be, frankly, even more surprising if they get leave. Had the FCA gone the other way, it might well have been an issue of “public importance” because Canadian trade-marks law would have become quite unpredictable. However, the FCA reached the conclusion that most IP lawyers would have predicted and the law on s. 10 seems just fine as it stands now and always did.

HK