Glen Breton Rare Losses Trademark Battle

[John]

Canadas only single malt whisky producer Glenora Distillers (International) Ltd. announced earlier this month that the Federal Court has overturned a ruling of the Trade-marks Opposition Board that allowed the company to register Glen Breton Rare, the name of its single malt whisky, under the Trade-marks Act.

Lauchie MacLean the Glenora distillery president said:
"It appears that the decision is based on a conclusion that the word glen can no longer be used in Canada as a registered trademark for whisky, unless it is a scotch whisky,"

The company has been embroiled in a protracted legal battle dating back to 2001 with the Scotch Whisky Association of Scotland, which opposes the use of the word glen in the whisky's name on the grounds that it confuses consumers into thinking the whisky is from Scotland.

The Federal Court said the word the word "Glen" was widely used on Scottish-produced whisky, meaning the use of the word on a Canadian-produced whisky was confusing and misleading to consumers. Evidence filed by the SWA included more than 30 instances of "Glen Breton" being mis-described in Canada as "Scotch Whisky", with examples of confusion found in shops, adverts, price lists, menus and websites.

The court found "the consumer who thought he or she was ordering a new Scottish single malt would never know something else was served".

So does this mean existing bottles of Glen Breton Rare will become rare and collectable.

John

[eric]

So the Glenora has to change his name how about NOVA Scotia?Doesn`t that resembles a lot with OLD Scotia?I hope that Lauchie MacLean doesn`t have to change his name may be it sounds too Scottish and therefore it can confuse people,thinking they talk to a Scot ,it turns out to be a Canadian.Those names are historrically in the area in Canada and now some stupid law forbids it.Do they think that the consumers are stupid morans or can`t they see the diffrence themselves?
What would happen with the word WHISKY if it turned out it is Irish from origin afterall?

[John]

Hi thought i would update this post with results of the latest round in the battle between the Canadian Glenora Distillery and the Scotch Whisky Association

Glenora Distillery, the Cape Breton distiller has won the latest round in a continuing battle with the Scotch Whisky Association over the use of the word Glen in its labelling.
The Federal Court of Appeal has upheld the Nova Scotia company's registration of Glen Breton as the trademark of its single-malt whisky.

"It takes a big monkey off our back and financial burden," Glenora Distillery president Lauchie MacLean said yesterday.

John

[John]

Another update:

Scotch Whisky Association loses fight to stop Canadians using "Glen"

A Canadian distillery has become the first in the world outside Scotland to win the right to use the world Glen in the name of its whisky. After a nine-year legal battle costing nearly £100,000, Glenora Distillers International of Nova Scotia finally won its fight to call its whisky Glen Breton Rare.

After a nine-year legal battle costing nearly £100,000, Glenora Distillers International of Nova Scotia finally won its fight to call its whisky Glen Breton Rare after the Supreme Court of Canada refused to hear an appeal that could have blocked the company from using the name.

The Scotch Whisky Association has zealously guarded the "Glen" monicker, saying it should apply only to whisky made in Scotland; arguing that it may give the impression of a Scottish product; and that the name Glen Breton could imply a connection to famous whisky names such as Glenlivet and Glenfiddich.

But the company faces further legal battles from the association as the small distillery now looks to market the whisky more aggressively on a global scale, with the prospect of further trademark applications. The association, which protects the interests of the Scottish whisky industry, has pledged to take further action against the distiller if it attempts to trademark beyond its borders the only single malt whisky produced in Canada.

In 2007, the Trademarks Opposition Board in Canada ruled that the use of the word Glen was not misleading but last year the Federal Court of Canada overturned that decision following an appeal from the Scotch Whisky Association. The Federal Court found that "the trade is confused" by the trademark, that Glen Breton was often listed as "single malt Scotch" and that "the ultimate consumer who thought he or she was ordering a new Scottish single malt would never know that something else was served".

However, in January the Federal Court of Appeal upheld Glenora Distillers' trademark registration for Glen Breton, launched in 2000, and taking its name from its hometown of Glenville.

Now the Supreme Court of Canada, the highest court in the country and the final court of appeal, has ended the legal argument by blocking the Scotch Whisky Association's challenge. Glenora can now register its trademark in Canada.

Glen Breton is already sold in Canada, theUS, Europe and Asia, but Glenora has said the legal challenges had concerned importers and made it hard for the company to market its whisky as widely as it would have liked.

David Williamson of the Scottish Whisky Association said the body was disappointed by the court decision. "We will continue to monitor the marketing of this product to ensure there is not continued confusion to the consumer, and we will be looking to oppose the trademark's registration in any markets where such confusion is likely," he said.

"What the Canadian courts have consistently held is that this trademark is causing confusion within the market. Therefore it is disappointing that the court has decided not to give leave to appeal.

"Canadian courts have found in the past that the use of the word Glen' on a whisky that is not produced in Scotland is causing confusion over the product's origin.

"We wrote to the company to warn that if they proceeded to register this trademark it would cause confusion in the market. Regrettably that's what happened. We never received a reply so we had to oppose the application for the trademark."

"It's a really huge victory for us," said Glenora vice-president Bob Scott. "Our message is: try this unique product from Canada.".

John

[John]

SWA Response to the Canadian Supreme Courts Decision on the "Glen Breton" trademark:

The Association is disappointed by the Canadian Supreme Court's decision refusing leave to appeal. However, the Court of Appeal's findings that the mark has caused confusion because of its use of a "Glen" prefix, and that Glenora has marketed its product as Scotch in all but name, have not been reversed.

We will continue to monitor the marketing of this product to ensure that it does not cause continued confusion and will oppose applications to register the mark in any country where such confusion is likely.

John

[Samson]

I am pleased this has been sorted but i do not blame the SWA for trying to protect their brand although i never thought Glen Breton to be a great threat as i wouldnt rate it very highly. I would think a greater threat to the Scotch whisky brand in the future will come from China, India and Russia.

Samson