Baker & McKenzie - Scotch Whisky Association objects to geographic connotation in trade mark

Baker & McKenzie reports on a Federal Court decision in which the Scotch Whisky Association alleged that the mark “Glenn Oaks” was misleading when used in relation to bourbon as the word “Glenn” conveyed a clear connotation of Scottish origin.

According to Baker & McKenzie, it was also argued that “Glenn Oaks” was deceptively similar to trade marks that had acquired a reputation in Australia for scotch whisky such as “Glenfiddich”, “Glenlivet” and “Glenmorangie”.

Baker & McKenzie note that despite both arguments being rejected on the facts, this case highlights that a mark may be perceived as having geographical significance without being the name of an actual place. The possibility of this sort of objection should be kept in mind when deciding on product names.

Scotch Whisky Association objects to geographic connotation in trade mark


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