IN THE MATTER OF AN OPPOSITION
by The Scotch Whisky Association to application
No. 1,081,867 for the trade-mark GLEN BRETON
filed by Glenora Distillers International Ltd.
On November 8, 2000, the applicant, Glenora Distillers International Ltd., filed an application to register the trade-mark GLEN BRETON for “single malt whisky” based on proposed use in Canada. The application was amended to disclaim the word BRETON and was subsequently advertised for opposition purposes on August 14, 2002.
The opponent, The Scotch Whisky Association, filed a statement of opposition on January 14, 2003, a copy of which was forwarded to the applicant on March 3, 2003. The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(i) of the Trade-marks Act because the applicant could not have been satisfied that it was entitled to use the applied for trade-mark because it is deceptively misdescriptive of the applied for wares since the word GLEN has become recognized as designating Scotch whisky.
The second ground is that the applied for trade-mark is not registrable pursuant to Section 12(1)(b) of the Act because it is deceptively misdescriptive of the place of origin of the wares and/or the character or quality of the wares because GLEN is defined as “Chiefly Scottish. A Valley.” and the applied for mark implies that the applicant’s whisky is Scotch whisky made in Scotland.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 10 and 12(1)(e) of the Act. The opponent contends that the word GLEN has become recognized in Canada as designating Scotch whisky and that the applicant’s mark so nearly resembles the prohibited mark that it is likely to be mistaken for it. The fourth ground is that the applicant’s mark is not distinctive because it is deceptively misdescriptive and is a mark whose adoption and use is prohibited by Section 10 of the Act.
The applicant filed and served a counter statement. As its evidence, the opponent submitted the affidavits of James Devin and Ian Glen Barclay. As its evidence, the applicant submitted the affidavits of Michael Kennedy, David A. Copp and Lauchie MacLean. As its evidence in reply, the opponent submitted a second affidavit of Ian Glen Barclay. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The Opponent’s Evidence
In his affidavit, Mr. Devin identifies himself as Director of Finance and Administration of the opponent. Appended as Exhibit JD.1 to his affidavit is a copy of the opponent’s “Statistical Report” for 2002. According to Mr. Devin, the statistics in that report are derived from public documents issued in the United Kingdom by Her Majesty’s Customs and Excise. Table 13 in the 2002 report states that the volume of Scotch whisky exports to Canada for that year was 3,583,147 liters of pure alcohol representing over £34 million. Mr. Devin states that the former figure is equivalent to over eleven million bottles. Although not specifically referenced by Mr. Devin, that table also lists a similar export volume to Canada for the year 2001. Also of note is Table 9 in the 2002 report which provides a breakdown of Scotch whisky exports by type, namely malt Scotch and blended Scotch sold in bulk and in bottles. Although no specific figures are given for Canada, it appears that for most countries the proportion of malt Scotch imported is less than ten per cent of the total Scotch whisky imported. In other words, the vast majority of Scotch whisky sold throughout the world appears to be blended Scotch. Mr. Devin does not refer to sales or export figures for any years other than 2002.
In his first affidavit, Mr. Barclay identifies himself as a solicitor employed as the Director of Legal Affairs for the opponent. The opponent is comprised of 57 members who produce more than 95% of the Scotch whisky sold worldwide. Mr. Barclay’s primary responsibility is the pursuit of legal proceedings around the world against businesses who sell whisky in contravention of the rights of the opponent and its members respecting Scotch whisky produced in Scotland. Much of his affidavit deals with various actions taken by the opponent in a number of countries.
As noted in reviewing the Devin affidavit, it appears that the vast majority of Scotch whisky sold throughout the world is blended Scotch, namely whisky that is comprised of Scotch whiskies produced from different distilleries. A small percentage of Scotch whisky sold is what is called single malt Scotch, namely Scotch whiskey that is the product of a single distillery in Scotland. Mr. Barclay acknowledges that non-Scotch single malt whiskies are legitimately produced in countries other than Scotland.
Mr. Barclay states that “Scotch Whisky” is a protected geographical indication in Canada. Appended as Exhibit IGB4 to his first affidavit is a photocopy of a certificate (file no. 849997) indicating that “Scotch Whisky” has been entered on the list of geographical indications maintained pursuant to Section 11.12(2) of the Act, The Scotch Whisky Association being identified as the responsible authority.
Mr. Barclay states that the word GLEN is the anglicized spelling of the Scottish Gaelic word “Gleann” or “Ghlinne” meaning a narrow valley, dale or glen. He further states that the origin of the word is Scottish. However, standard dictionary definitions indicate that the word GLEN has universal application.
Mr. Barclay further states that the word GLEN when used in association with whisky connotes Scotch whisky. He lists a number of brand names used by various producers or sellers of Scotch whisky where the name is prefixed by the word GLEN. Most of these GLEN-prefixed brands are for single malt Scotch whisky rather than blended Scotch whisky. Mr. Barclay notes that most single malt Scotch whisky distilleries are situated in the glens of Scotland. A number of these GLEN-prefixed names have been registered as trade-marks in Canada.
Mr. Barclay concludes that, when used with whisky and single malt whisky, the word GLEN has been associated with Scotch whisky in Canada for over one hundred years. However, Mr. Barclay failed to evidence any sales of either single malt or blended Scotch whisky in Canada in association with GLEN-prefixed marks. The fact that several such brands appear in price lists for the Liquor Control Board of Ontario suggests that at least some sales have been effected. But in the absence of additional evidence on point, it is not possible to assume that such sales have been substantial.
In his first affidavit, Mr. Barclay also provides a brief history of the applicant. Apparently the applicant’s predecessor Glenora Distillers sold a single malt Scotch whisky in Canada under the brand name KENLOCH since 1990. According to Mr. Barclay, the applicant’s original predecessor was Glencoe Distillers Limited. The opponent raised concerns about that name and, in 1987, that company changed its name to Glenora Distillers Limited. Glenora Distillers Limited was the general partner in Glenora Distillers Limited Partnership which became insolvent in 1991. The applicant apparently acquired the business in 1994. In 2000 and in 2002, the opponent wrote to the applicant raising its concerns about the name GLEN BRETON used in association with the applicant’s single malt whisky. The opponent did not receive any replies to those letters.
Mr. Barclay evidences an incident which he indicates misrepresents the applicant’s product as Scotch whisky, namely an advertisement for the applicant’s product in a publication of the Liquor Control Board of Ontario (“LCBO”). However, that advertisement did not directly refer to GLEN BRETON as a Scotch whisky (see Exhibit IGB13 to the first Barclay affidavit). Furthermore, any mistake was clarified by a later published correction.
The Applicant’s Evidence
In his affidavit, Mr. Kennedy identifies himself as a specialist in Gaelic-Maritime Canadian Studies. Based on his studies, Mr. Kennedy concludes that Gaelic culture derived from Scotland is an indigenous culture in the highland regions of Cape Breton Island in Nova Scotia.
The Copp affidavit introduces into evidence the results of various on-line searches conducted by Mr. Copp of records of the Canadian trade-marks register in relation to marks incorporating the word GLEN. Not surprisingly, Mr. Copp located a large number of GLEN trade-marks for various wares and services. When it came to GLEN-prefixed marks for whisky, however, almost all of the entries located were for Scotch whisky. Mr. Copp also searched the United States trademark register on-line through the web site of the United States Patent and Trademark Office. However, the results of those searches are largely irrelevant to the issues at hand.
In his affidavit, Mr. MacLean identifies himself as the President and principal owner of the applicant. He provides a history of his company and its predecessors which is generally consistent with that provided by Mr. Barclay in his first affidavit. He states that the original business operating the Glenora distillery in Cape Breton became insolvent in 1990. A successor operated the distillery from 1991 to 1993 and then went into receivership. The applicant subsequently acquired the business. Among other products, the applicant produces a single malt whisky under the trade-mark GLEN BRETON.
Mr. MacLean states that the name Glenora was derived from the nearby town of Glenora Falls. The brand name GLEN BRETON was chosen because of the associations with Cape Breton Island and with Glenora, Glenville and the glen stream MacLellan’s Brook which is the water source for the applicant’s product. He further states that the name GLEN is commonly used for place names in Nova Scotia in general and in Cape Breton in particular. According to Mr. MacLean, GLEN BRETON single malt whisky has been sold since 2000. Exhibit M is a specimen label which includes features that stress the product’s Canadian origin. The label includes the wording “Canada’s Only Single Malt Whisky” and the representation of a red maple leaf.
The Opponent’s Reply Evidence
Mr. Barclay’s second affidavit was submitted as reply evidence. However, much of that affidavit either comprises argumentation or evidence not strictly confined to matters in reply. Thus, much of that affidavit is inadmissible. The portions of the second Barclay affidavit that do qualify as proper reply evidence answer the state of the register evidence submitted by the applicant and generally establish that almost all of the GLEN-prefixed marks on the Canadian trade-marks register for alcoholic beverages are registered for Scotch whisky.
The Grounds of Opposition
In accordance with the usual rules of evidence, there is an evidential burden on the opponent to prove the facts inherent in respect of the allegations pertaining to each ground of opposition. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist: see Joseph E. Seagram & Sons v. Seagram Real Estate Ltd. (1984), 3 C.P.R.(3d) 325 at329‑30 (T.M.O.B.) and John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at 297‑300 (F.C.T.D.).
The first ground does not raise a proper ground of opposition. The allegation that the applied for mark offends Sections 12(1)(b) and 12(1)(e) of the Act does not speak to the applicant’s bona fides in making the statement that it is satisfied that it is entitled to use the applied for mark in Canada. Presumably the opponent meant to allege that the applicant adopted its mark knowing it to be unregistrable. Even if it had, however, the success of the first ground would be contingent on the success of the second or third ground. Thus, the first ground of opposition is unsuccessful.
As for the second ground of opposition, in view of the decision in Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R.(4th) 254 (F.C.T.D.) which relies on the decision of the Supreme Court of Canada in Lightning Fastener Co. v. Canadian Goodrich Co. [1932] S.C.R. 189, it appears that the material time for assessing a ground based on Section 12(1)(b) of the Act is, and always was, the filing date of the application. Furthermore, the issue under Section 12(1)(b) of the Act is to be determined from the point of view of an everyday user of the wares. Finally, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
The essence of the opponent’s argument is that Canadian users and purchasers of whisky have been educated to associate the word GLEN solely with Scotch whisky. However, the opponent’s evidence does not support that argument. The Barclay and Devin affidavits fail to evidence any Canadian sales of Scotch whisky as of the material time (i.e. - the applicant’s filing date). Even if the later sales for the years 2001 and 2002 that are arguably in evidence are considered, they relate to all Scotch whisky sold in Canada. The vast majority of those sales were of blended Scotch whisky. Only a small portion of those sales were of single malt Scotch whiskey and, at best, only a limited number of single malt Scotch whiskies were sold in Canada in association with GLEN-prefixed trade-marks. The LCBO price lists suggest that at least a few such products were sold in Ontario. However, since the opponent failed to evidence the extent of Canadian sales of Scotch whisky (either blended or single malt) bearing GLEN-prefixed marks, I can only ascribe a limited reputation for any such marks in this country.
It appears that the opponent is also relying on the state of the register evidence to establish a reputation for GLEN-prefixed Scotch whisky marks in Canada. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located. In the present case, there are a number of GLEN-prefixed marks on the register for whisky, perhaps enough to conclude that at least some are in active commercial use in this country. However, the numbers are far from sufficient to conclude that there has been widespread use of such marks in this country. In any event, the use by third parties of such marks would, if anything, tend to suggest that the word GLEN is available to any trader to use as a component of his mark for whisky.
If the opponent was of the view that Canadians have been educated to a particular meaning of the word GLEN for whisky, it could easily have introduced evidence from Canadian consumers to that effect. In this regard, survey evidence might have been particularly effective. As it is, the absence of evidence from consumers indicating that they would be, or have been, deceived by the use of a GLEN-prefixed mark for a non-Scotch whisky tends to undermine the opponent’s case.
As a matter of first impression, the average consumer viewing the trade-mark GLEN BRETON for single malt whisky might have several reactions. One likely reaction is that GLEN BRETON is a name, perhaps the name of the person producing the whisky. Glen is a common given name as evidenced by Mr. Barclay’s middle name and the disclaimer of BRETON in the applicant’s application was in response to a surname objection raised by the Examiner pursuant to Section 12(1)(a) of the Act.
Another likely reaction to the mark is that the associated whisky is produced in or near a glen or valley somewhere in Cape Breton. A third possible reaction is that the mark has a vaguely Scottish or Gaelic connotation somewhat suggestive of Scotland for those few individuals familiar with third party GLEN-prefixed marks for Scotch whiskey. However, the fact that a mark might be suggestive (or mis-suggestive) of the character, quality or place of origin of the wares does not preclude registration under Section 12(1)(b) of the Act. More importantly, the fact that there are several possible likely reactions to the mark means that there is no single reaction, much less one which is clearly descriptive or deceptively misdescriptive of the wares. Thus, the second ground of opposition is unsuccessful.
As for the third ground of opposition, the opponent asserts that the applied for trade-mark is not registrable pursuant to Section 12(1)(e) because it contravenes Section 10 of the Act which reads as follows:
10. Where any mark has by ordinary and 'bona fide' commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trademark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.
10 Si une marque, en raison d’une pratique commerciale ordinaire et authentique, devient reconnue au Canada comme désignant le genre, la qualité, la quantité, la destination, la valeur, le lieu d’origine ou la date de production de marchandises ou services, nul ne peut l’adopter comme marque de commerce en liaison avec ces marchandises ou services ou autres de la même catégorie générale, ou l’employer d’une manière susceptible d’induire en erreur, et nul ne peut ainsi adopter ou employer une marque dont la ressemblance avec la marque en question est telle qu’on pourrait vraisemblablement les confondre.
The relevant date for determining the “ordinary and bona fide commercial usage” of the mark for the purposes of Section 10 would appear to be the date of my decision: see Olympus Optical Company Ltd. v. Canadian Olympic Association (1991), 38 C.P.R. (3d) 1 at 3-4 (F.C.A.).
The third ground of opposition is essentially a determination of whether or not a particular word or phrase is precluded from registration as being generic, common to the trade or otherwise non-distinctive. The evidence in this case does not establish that the word GLEN falls within that prohibition. At best, it shows that there are a handful of third party GLEN-prefixed marks used in Canada for Scotch whisky. Even if GLEN had been established as a mark prohibited by Section 10, the applicant’s mark GLEN BRETON does not so nearly resemble the word GLEN as to be likely to be mistaken for it. Thus, the third ground is also unsuccessful. In fact, it seems somewhat unusual that the opponent is trying to make the case that the word GLEN should be prohibited for whisky and that a GLEN-prefixed mark should therefore be refused registration given that a number of its members are registered owners of just such a mark in Canada.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - January 14, 2003): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
The fourth ground of opposition is that the applicant’s mark is not distinctive because it is deceptively misdescriptive and because it offends Section 10 of the Act. Even given the different material times involved, my conclusions respecting the second and third grounds are also applicable here. Thus, the fourth ground is also unsuccessful. Again the opponent is seeking exclusive rights to the word GLEN for whisky. This seems odd given that there are a number of third parties using different GLEN-prefixed marks for just such a product. If anything, this fact supports the contention that GLEN is a weak component of whisky marks and that consumers can easily distinguish such marks based on their other elements.
This appears to be a case of overreaching by the opponent. The fact that some of its members use trade-marks of a certain format (i.e. - GLEN plus another word) does not preclude others from using that same format. If the opponent truly believed that the word GLEN merits special protection for producers of Scotch whisky, it should have long ago taken steps to protect that word as a geographical indication of Scottish origin much as it did for the words “Scotch Whisky.” Alternatively, it was open to the opponent to register GLEN as a certification mark and thereby enforce particular standards for whisky sold under that mark by its members and others. Since it chose to do neither, it cannot preclude others from registering GLEN-prefixed marks for legitimate use in commerce with non-Scotch whiskies.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT GATINEAU, QUEBEC THIS 10th DAY OF JANUARY, 2007.
David J. Martin,
Member,
Trade-Marks Opposition Board.