The Battle of the Glen Part 1 of 3: What’s in a name?

When is Scotch whisky not Scotch whisky?

The answer of course is when it is not distilled and matured in Scotland. While you might expect that question and answer to be taken from the pages of a whisky guide, or a Scotch blog, those words were in fact lifted from the first paragraph of the 2008 Federal Court decision in Scotch Whisky Association v. Glenora Distillers International Ltd.

The branding and marketing of alcohol has always been big business, but unlike previous eras “micro” distilleries, breweries and wineries are now competing nationally and internationally for consumers’ dollars and loyalty. While healthy competition is good for everyone, fledgling business owners must be careful about encroaching on the intellectual property rights of their competitors. Those colourful beer, wine and whisky bottle labels that we all enjoy are vested with copyright and trade-mark protections that must be respected.

What follows is an example of a small Canadian distiller attempting to enter the lucrative market of single malt whiskies, and the Scotch Whisky Association’s attempt to stop them by way of intellectual property rights litigation. Though most observers would probably agree that the merits of whisky are better off debated over a few drams at a tasting, or in industry publications, occasionally the courts are called on to act.

Glenora Distillers International Ltd. (“Glenora”) is a distiller located in Cape Breton, Nova Scotia. Construction of the distillery began in 1988 on a 900 acre site in Glenville, Inverness County. The distillery consists of malt storage (like many distillers Glenora contracts the malting process to an outside source), grist mill, mash house, still house, warehouses, bottling plant, as well as tourism facilities. The structures were constructed in traditional post and beam style just like the famous distilleries found in Scotland. The two copper pot stills were made by Forsyth & Sons of Speyside Scotland.

In 1990 Glenora began distilling a single malt whisky, the Glen Breton, in the traditional Scottish method. Glenora claims that Glen Breton has the taste, character, and aroma of Scotch whisky. A bold claim in indeed. However Glenora is not permitted to call its whisky “Scotch”. “Scotch whisky” is a protected geographical designation pursuant to the Trade-marks Act and may only be used in association with whiskies produced in Scotland.

The Food and Drug Regulations also require that in order to be labelled “Scotch” or “Scotch whisky”, a product must have been distilled in Scotland, in accordance with the laws of the United Kingdom.

Between the Trade-marks Act, and the Food and Drug Regulations Glenora found itself in a bind: clearly it could not call the Glen Breton “Scotch” but at the same time it was not able to call its product “Canadian whisky”, as the Regulations require that only those products that have the taste, character, and aroma associated with Canadian whisky, be labelled as such. Thus, Glenora’s Glen Breton is simply labelled a “single malt whisky”.

The name “Glen Breton” in conjunction with its label as a “single malt whiskey” sounds strikingly similar to Glenlivet, Glenfiddich and Glenmorangie, all of which are of course “Scotch whiskies” distilled and bottled in Scotland. Indeed the Federal Court of Appeal found that Glenora’s marketing capitalized greatly on the similarities between its whisky and Scotch whiskies. Glenora proudly considers its product to be in direct competition with single malts distilled in Scotland. Glenora does not deny marketing the Glen Breton as being like a single malt Scotch in every aspect but name.

Glenora applied to trademark its signature malt, the Glen Breton, in 2000. The Scotch Whisky Association (the “Association”), an organization headquartered in Scotland to protect and promote the interests of the Scotch industry, challenged Glenora’s application.

In essence the Association submitted that the proposed trade-mark was “deceptively misdescriptive” of the place of origin of the whisky, and its character or quality; that the word “glen” has become recognized as designating goods of a particular kind and origin, namely whisky from Scotland. Put simply, the Association’s position was that Glenora could not register a trademark that would lead consumers to believe the Glen Breton was “Scotch” when it was in fact just a Canadian single malt whisky.

The “Battle of the Glen”, as it was affectionately dubbed, was not resolved until nine years, and two appeals later…

Read on at the Battle of the Glen Part 2.

*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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