The Battle of the Glen Part 2 of 3: Confusion in the Marketplace
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 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.
If “glen” in ordinary and commercial use was a mark that had become shorthand for “whisky made in Scotland” than Glenora would be unable to register Glen Breton as a trademark under the Trade-mark Act.
The Trade-marks Opposition Board rejected the Association’s objection on the basis that although there was evidence of “glen”-prefixed marks being used by Scotch whisky distillers, the Board found that this use was not widespread enough to have instructed Canadian consumers to associate the word “glen” with Scotch whiskies. The Association appealed.
By 2008 when the appeal of the Trade-marks Opposition Board came before the Federal Court, along with it came volumes of new evidence on the history of Scotch drinking in Canada and details of single malt Scotches sold with “glen” in their name. Apparently in the year 2000 there were some 22 different whiskies sold in Canada that contained the word “glen”. After reviewing the new evidence, Justice Harrington was of the opinion that there was extensive reputation associated with “glen”-prefixed Scotch whisky brands. He found that there was actual confusion in the marketplace, and that some consumers were not aware that Glenora’s product was not a Scotch distilled in Scotland.
Justice Harrington did not accept the argument made by Glenora that any confusion by consumers was due to the fact that Glen Breton has many of the characteristics of Scotch (flavour, aroma, colour etc.) and found instead that the confusion was due to the use of the “glen”-prefixed mark. Justice Harrington concluded that “Glen Breton” was not a registerable trade-mark as the word “glen” had by ordinary commercial use become recognized in Canada as designating Scotch whisky. He therefore allowed the appeal and directed the Registrar of Trade-marks to refuse Glenora’s application to register Glen Breton.
Glenora appealed that decision.