Leave to appeal refused in GLENN OAKS trade mark case - Scotch Whisky Association v De Witt [2008] FCA 73
Tim Golder, Partner, and Peter Ryan, Senior Associate report on Scotch Whisky Association v De Witt [2008] FCA 73 in which leave to appeal against an unsuccessful opposition to registration of GLENN OAKS as a trade mark for various alcoholic beverages, including bourbon and scotch whisky but excluding whisky not produced in Scotland, was refused. As to the first limb, Justice Jessup was of the view that the grounds on which the SWA was unsuccessful were arguable and might therefore be the subject of an appeal, including the issues of descriptiveness of the trade mark for bourbon and whether the trade mark would cause confusion because of the connotation the mark may have. Even though the first limb was established, there would not be substantial injustice to the SWA if leave were refused. This was because the SWA would have a right to apply for cancellation if leave were refused, and Justice Jessup was not convinced that the SWA would be in an inferior position in any such cancellation proceedings, merely because De Witt might be able to resist cancellation if deception or confusion arose through no fault of its own.
According to Tim Golder and Peter Ryan, applicants who have been unsuccessful on previous occasions who seek leave to appeal should be aware that a court may exercise its discretion to refuse such leave, unless refusal would give rise to a substantial injustice.
Leave to appeal refused in GLENN OAKS trade mark case