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Battle of the Glen Part 3 of 3: You can take the “Glen” out of Scotland, but you can’t take the Glen out of “Glen Breton”

This is part 3 of a three-part series. For Context see Part 1 here and Part 2 here.

The Federal Court of Appeal allowed the appeal and directed that the Registrar of Trade-marks allow Glenora’s application to register Glen Breton. Although the Association sought leave to further appeal to the Supreme Court of Canada, leave was denied, thus bringing the Battle of the Glen to a close in Glenora’s favour.

Unfortunately for whisky lovers the Court of Appeal’s reasoning was not based on the characteristics of Glen Breton, the origin of the word “glen”, or what Scotch drinkers look for when perusing the shelves of liquor stores. Instead the Court of Appeal overturned Justice Harrington on the basis that he made an error of law in his trade-mark analysis. The Court of Appeal held that Justice Harrington was wrong when he decided that the word “glen”, having only previously been used as part of various registered trade-marks, was in fact a “mark” within the meaning of section 10 of the Act.

What is a “mark”? A “mark” is word or symbol used by a person for the purpose of distinguishing his or her wares or services from those wares or services made or sold by competitors.

The Court of Appeal observed that the word “glen” standing alone had never been used as a trade-mark in Canada. It had only been used as a prefix for trade-marks associated with Scotch whisky, most famously Glenfiddich, Glenlivet and Glenmorangie. The Court was unable to find that a segment of a trade-mark (“glen”) could stand alone as a mark. Previous decisions of the court held that trade-marks should not be dissected and analyzed syllable by syllable but rather they should be looked at as a whole. This means that the Association is unable to take apart “Glenfiddich” to argue that the “glen” portion of the word is itself a mark, and likewise the Association is unable to take apart the proposed trade-mark “Glen Breton” and focus its challenged solely on the word “glen”.

The court concluded by observing that the Association was essentially seeking to establish a monopoly over a word, which is not inherently descriptive, for a group of traders when it was not clear that any of the Association members incorporated the word into their trade-marks for the purpose of designating their whiskies as being from Scotland.

Though the Battle of the Glen was won by Glenora, victory was far from certain. As most brewers, distillers and vintners know all too well, Canada’s laws governing the sale and production of alcohol are confusing at best, and at worst down right opaque.

If your brewing or distilling operation is planning on launching a new product, or you are concerned about your business’s (or a competitor’s) use of intellectual property, you should seek trademark advice to avoid costly legal challenges.

*Alcohol & Advocacy publishes articles for information purposes only. They are not a substitute for legal advice, and persons requiring such advice should consult legal counsel.

Dan Coles
Retired bartender. Young lawyer. From the East, living in the West. Interested in British Columbia's producers and purveyors of wine, beer and spirits.

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