Thursday, June 11, 2009

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)


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