The Scotch Whisky Association v Marlon Dewitt and John Tormey

The Scotch Whisky Association (the opponent) opposed the registration of the trade mark GLENN OAKS (application 976817) by Marlon Dewitt and John Tormey (the applicant). The dispute concerned whether the applicant's proposed use of the trade mark on whisky was likely to cause confusion, particularly in relation to the origin and style of the product. The decision was made by Deirdre O'Brien in the Trade Marks Hearings.

The primary legal issue before the court was whether the applicant's trade mark, when applied to their whisky, would be likely to deceive or cause confusion, as prohibited by section 42(b) of the Trade Marks Act 1995 (Cth). This involved determining whether the labelling of the whisky as "bourbon" and the use of the name GLENN OAKS would create a false impression about the nature of the goods.

The court found that by labelling its whisky as bourbon, the applicant was effectively guaranteeing it was corn whisky made in America. Any potential implication of a Scotch style whisky that the name GLENN OAKS might otherwise have had was negated by the clear designation as American whisky. Consequently, the court determined that the section 42(b) ground of opposition had not been made out.

As none of the grounds pressed by the opponent were successful, the court ordered that application 976817 could proceed to registration one month from the date of the decision, unless a notice of appeal was filed. The court also ordered that each party bear its own costs, acknowledging that while the opponent was correct in identifying a likelihood of confusion prior to the applicant's amendment of its goods, the applicant had also been significantly inconvenienced.