Tag: Currently browsing "Scotch Whisky Association"
Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive
Elizabeth Ireland and Lisa Ritson of Blake Dawson report on Scotch Whisky Association v De Witt [2007] FCA 1649, in which the Federal Court has upheld a decision of the Trade Marks Office that the use of the mark “Glenn Oaks” in relation to a bourbon product was not likely to confuse, deceive or mislead consumers to think the product was of Scottish origin, or was a whisky, not a bourbon. In reaching the decision, the Court examined market differentiation between bourbon and whisky products, and consumer habits in relation to both products. Whilst the mark was accepted for registration, the Court modified the class of goods for which the mark could be used to explicitly exclude products labelled as “whisky”.
Scotch Whiskey was refused leave to appeal the decision in Scotch Whiskey Association v De Witt [2008] FCA 73 on 14 February 2008.
Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive
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- Published:
- 12 Mar 2008 / 09:38 PM
- Category:
- Trade Marks
Corrs Chambers Westgarth - End of the Line for Trade Mark Oppositions
Corrs Chambers Westgarth reviews a recent decision of the Federal Court of Australia of The Scotch Whisky Association v. Marlon de Witt [2008] FCA 73, which they consider raises a bar to avenues of appeal in unsuccessful trade mark oppositions.
According to Corrs Chambers Westgarth, this case sounds a note of caution for unsuccessful opponents in the Trade Marks Office considering appealing the decision to the Federal Court. This case demonstrates that subsequent appeals, even where there are good grounds for the matter to be reconsidered by the Full Court, may be stymied by an overly strict approach to other traditional requirements for leave. By contrast, an unsuccessful opponent who permits the mark to become registered and then commences cancellation proceedings in the Federal Court has an unfettered right of appeal to the Full Court against the decision at first instance. Accordingly, Corrs Chambers Westgarth notes that this may become the preferred avenue for an unsuccessful opponent before the Trade Marks Office to progress its case in the courts.
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- Published:
- 01 Mar 2008 / 01:38 AM
- Category:
- Trade Marks
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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About this entry
- Published:
- 06 Feb 2008 / 11:28 PM
- Category:
- Trade Marks