When is a whisky not a whisky?

It is a sad day …. No not because the Montreal Canadians are going to get eliminated from the Stanley Cup play-offs tonight (not that I care all that much one way or the other – except that I will get to rub the fact of it in to the wounds of my friends) but because Glenora Distillery has lost its battle at the Federal Court of Canada – the battle over whether it can use the name “Glen” in its branding.

Glenora makes and sells a fine whisky called “Glen Breton Rare”. I received a bottle for Christmas – nice stuff, not as fine as some of the top of the line whiskys from Scotland, but still quite good.

The Scotch Whisky Association of Scotland took issue with the use of the word “Glen” in the name, arguing that its use created confusion in the minds of the spirits consuming public – such that the people who consume whiskys would be confused and believe that “Glen Breton Rare” comes from Scotland (notwithstanding the fact that the names “Scotch” and “Scotland” do not appear on the labelling anywhere.

A “glen” is a narrow secluded valley, generally in a mountainous area.

So that I am not accused of being biased, there are wonderful rules in international trade-mark circles that protect geographic areas, this is true. There are also rules relating specifically to spirits. Most commonly associated with such names as “Bordeaux” and “Champagne”.

Unfortunately I have not been able to lay my hands on the actual decision, so I cannot comment on its particulars. Mt comments are general in nature.

First – get some advise before you sink piles of cash into your marketing campaign (and your brand). As the old saying goes, an ounce of prevention is worth a pound of cure – recognizing that advise comes in the form of opinions and one can never be assured that what your advisor views as logical will be viewed as such by another. Or that people will not take a swipe at you simply on strategic grounds.

Second – fight for what you believe in. Some pretty odd things have happened to cases as they wind their way up the food chain. In Glenora’s case, I suspect they will fight – the branding and the brand recognition they have built up are critical to the business.

Finally – in the case of trade-marks and issues surrounding “confusion” consider the effect of education campaigns – example in the case of Glen Breton – targeted advertising confirming the difference between Canadian and Scottish whiskys, and in particular the difference between Glen Breton Rare and “scotch whiskys” – such advertising could be effected at both the retail level to consumers and to wholesalers/distributors/restaurants. Who knows, perhaps they have already done this.

In any event, good luck to Glenora – fight the good fight.

Comments

[Rob Currie]

Charles, you're right on the mark here. In my view, this action by the Scottish whisky distillers is nothing more than the IP equivalent of a SLAPP suit. "Glen" is far too generic a term to be subject to this level of (extraterritorial) protection!

It reminds me of a similar case, where McDonald's went after some poor woman in northern Scotland who had a shop called "McMuffins." As I recall, that one petered out b/c the Chieftain of MacDonald of Clanranald pointed out that, to operate in Scotland, McDonald's would have required HIS permission to call itself "Mc" anything.