Scotch Whisky Association v De Witt

REASONS FOR JUDGMENT 1 This is an application for leave to appeal from a judgment of a Judge of the court given on 2 November 2007 dismissing an appeal by the applicant under s 56 of the Trade Marks Act 1995 (Cth) ("the Act"). The applicant was the unsuccessful opponent to an application for registration of the following mark: 2 The applicant requires leave to appeal because of the terms of s 195(2) of the Act. Pursuant to s 25(2)(a) of the Federal Court of Australia Act 1976 (Cth), the application for leave may be heard and determined by a single Judge or by a Full Court. However, pursuant to O 52 r 2AA(a) of the Federal Court Rules, such an application must be heard and determined by a single Judge unless a Judge directs that it be heard and determined by a Full Court. Neither party proposed that I should give such a direction, in which circumstances I shall determine the applicant's application for leave as a single Judge. 3 The trial Judge dismissed the applicant's appeal from the delegate, and made the following order: The respondent's GLENN OAKS mark remain on the register with respect to the following amended statement of goods and services in class 33: "Scotch whisky, bourbon (other than bourbon that is labelled only as 'whisky' or 'whiskey'), vodka, dark rum, white rum, ouzo, tequila, gin, liqueurs and all other spirits in this class except for whisky that is not produced in Scotland. 4 The applicant is an association of producers of Scotch Whisky, including those whose whisky is named and marketed in ways which include the expression "glen", either as a word in its own right or as a part of a longer word. Although expressed in different ways, the gravamen of the applicant's concern is that, to consumers across a broad range, use of the word "GLENN" with respect to whisky would be evocative of a Scottish origin. It makes no similar submission in relation to the other alcohols referred to in the statement of goods. Likewise, the proceeding before his Honour was not concerned with whisky (other than bourbon) produced elsewhere than in Scotland, since such whiskies were and are excluded from the statement of goods. 5 The proceeding below was concerned with the potential use of the mark with respect to bourbon. As his Honour found, bourbon is whisky (although, by custom, spelt "whiskey"). The applicant's position is, in effect, that bourbon should have been treated in the same way as other whisky not produced in Scotland, and excluded from the statement of goods. 6 Before the trial Judge, the applicant relied upon ss 42(b), 43 and 60 of the Act. I can deal with s 60 immediately. His Honour rejected the proposition that there was any other trade mark, or "family" of marks, with respect to which the use of the respondent's "Glenn Oaks" mark would be likely to deceive or cause confusion. Nothing put by the applicant on the present application for leave has persuaded me that his Honour's conclusion in this respect may have been in error or otherwise warrants reconsideration by a Full Court. 7 Under s 43 of the Act, the applicant submitted that the word "GLENN" had a connotation of Scottish origin when used with respect to whisky, and that the use of the mark would, therefore, be likely to deceive or cause confusion. The trial Judge rejected that submission for three reasons: