In March, 2021 the Scotch Whisky Association (“SWA”), a Scotland based trade association of the Scotch whisky industry, and Whyte and Mackay Limited, a Scotland based distilling and bottling company, commenced an action in the Supreme Court of British Columbia against Macaloney Brewer & Distillers Ltd., the Victoria, BC based owner of Macaloney’s Caledonian Distillery. Macaloney’s distills, matures, bottles and sells whisky.
The SWA asserts that Macaloney’s whiskies are marketed and branded in a way that would deceive or confuse consumers into believing its product is bona fide Scotch whisky. It’s interesting to note that in their lawsuit the plaintiffs SWA and Whyte and Mackay don’t seek damages, or an order preventing Macaloney’s from distilling and bottling single malt whisky – instead they seek an injunction restraining what they call Macaloney’s “misleading branding and marketing” and an order that Macaloney’s destroy all such packaging and marketing materials.Continue reading
Earlier this summer Mr. Justice Boswell of the Federal Court of Canada released his decision in Diageo Canada Inc. v. Heaven Hill Distilleries, Inc., which resolved a trademark and passing off dispute between two significant players in the liquor industry. At issue in Diageo v. Heaven Hill is the similarity in Diageo’s Captain Morgan mark, and Heaven Hill’s Admiral Nelson mark. Both marks are used by their respective owners to identify and market their lines of rum.
American craft beer class action warfare remains alive and well in 2017 with Wal-Mart entering the cross-hairs earlier this month. In February Mr. Matthew Adam of Hamilton County, Ohio commenced a class action lawsuit against Wal-Mart on behalf of all purchasers of “craft” beer from Wal-Mart Stores.
In part one of Craft Beer Litigation: Understanding the Blue Moon Class Action Alcohol & Advocacy outlined the facts of a class action lawsuit started by a self-proclaimed “beer aficionado” against MillerCoors after he learned, to his horror, that Blue Moon beer was not a “craft beer” after all.
Readers of Alcohol & Advocacy will not be surprised to learn that as craft beer and spirits grow in market share and notoriety, so too does the volume of class action lawsuits filed against their manufacturers.
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.
For context, see Battle of the Glen Part 1
When Glenora applied to Register “Glen Breton” as a trade-mark for use in association with its whisky, the Association opposed the registration. Specifically the Scotch Whisky Association challenged Glenora’s ability to use a mark prefixed with the word “glen” for its whisky. It claimed that the use of “glen”-prefixed marks in association with several well-known single malt Scotches, including Glenlivet, Glenmorangie and Glenfiddich, has resulted in an association in consumers’ minds between the word “glen” and whiskies distilled in Scotland.
When is Scotch whisky not Scotch whisky?