In a kinder and gentler time, before the era when big pharma v. generic Notice of Compliance litigation has almost taken over the Federal Court, Canada used to have lots of litigation about beer and spirits. Indeed, much of Canadian trade-marks law owes its existence to those more mellow days.
Well - beer and spirits are once again in the IP news. This Thursday, we will find out if the Supremes will grant leave to the Scotch Whisky Association in its appeal from the Federal Court of Appeal's decision upholding a Canadian company's right to register Glen Breton for single malt whisky - though notably not "Scotch Whisky". The original opposition and subsequent litigation were brought by the Scotch Whisky Association based upon the alleged rights of several of their members in "Glen" allegedly arising under the rarely used provisions of s. 10 of the Trade-marks Act, which provides, as I noted and commented before:
Now, for those whose interests run more to suds than single malt whisky - from wherever it may hail - consider that Labatt is suing Brick Brewing over the Red Baron label on the left, which Labatt alleges is confusing with it label on the right. Interestingly, Brick has a registration in a very similar - though not identical - label to the one on the left that predates Labatt's registration on April 29, 2009 in the label on the right by about 18 years. Yet more interesting is that Labatt is suing for copyright infringement. Even more interesting is that Labatt is seeking interim and interlocutory injunctive relief - which is almost never granted in the Federal Court these days. I'd say that Labatt has an uphill battle here.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.