Scotch Whisky Association's Appeal Attempt Scotched by Supremes

The Scotch Whisky Association's attempt to get leave to appeal the very sensible decision of the Federal Court of Appeal has - as I predicted - been scotched by the Supreme Court of Canada this morning. (Coram: McLachlin / Abella / Rothstein ).

As usual, with costs and without reasons.

Now, Glenora Distillers in Nova Scotia can have its trade-mark registration of GLEN BRETON for "single malt whisky." The whisky is made in Canada and has never been called "Scotch" whisky by its manufacturer, althougn Justice Sexton of the Federal Court of Appeal did note that "I believe it is fair to say that Glenora has marketed its product as being like a single-malt Scotch in everything but name."

The Federal Court of Appeal had rejected the argument that, by "segmenting" several trade-marks for single malt Scotch whisky that include GLEN, the Scotch Whisky Association could block Glenora's use of the word:

The word “glen,” being a common word and forming part of numerous registered trademarks, is at best a weakly distinctive component of those trademarks. However, by segmenting those trademarks to consider “glen” as a mark on its own, this court would be affording stronger trade protection to that word than is due.

The great irony of this case is that, had the Scotch Whisky Association succeeded in its appeal based upon its rather creative and unprecedented interpretation of s. 10 of the Canadian Trade-marks Act, several of its members might would have found their own trade-marks in jeopardy. Justice Sexton concluded:

In short, success in this appeal would jeopardize the trademarks of many of the Association’s members. In my view, this cannot be the correct result, and is not true to the spirit and purpose of section 10 of the Act. Accordingly, I would allow the appeal, and direct the Registrar to allow Glenora’s application for the registration of GLEN BRETON.

s. 10 provides that:

10. 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.

(emphasis added)

HK

Canadian Bererage Wars

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:

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.

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.

HK

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