Beamsville wineries battle over trademark

A recent Federal Court decision dealt with a trademark dispute between two nearby wineries in Beamsville, Ontario. Both wineries are located on a road named Locust Lane, and both used “Locust Lane” as a trademark.

The applicant had used “Locust Lane” on some of its wine labels for many years. In 2019, a new competing winery was founded next door that called itself “Locust Lane Estate Winery.” The applicant sued to stop the new winery from using the name. The Court dismissed the application, finding that the new winery was not guilty of a trademark violation, and the public was unlikely to be confused.

That may sound odd, but there were a number of factors at play. The applicant had not registered Locust Lane as a trademark, but that alone was not the issue. Enforcing an unregistered trademark is more difficult than enforcing a registered one but is possible under the right circumstances.

Trademarks Act

The biggest issue is that the law gives little protection over marks that describe the location of a business or its products. Indeed, the Trademarks Act says one cannot register a trademark that is “… whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.”

The reason for that is simple. It would be unfair to allow someone to get trademark protection over words that describe the product or where it is made.

It may be possible, though, to overcome that prohibition if the user can show what is called “acquired distinctiveness” or a “secondary meaning”. To do that, one has to provide evidence that the public is aware of the brand to such an extent that it has become associated with the product. The Court felt that the applicant had not shown that its use of “Locust Lane” had met that threshold.

The bottom line is that if you use descriptive terms like your location or something describing your product as a brand, it is a weak mark to which the law gives little or no protection.

For more information about the registration and use of trademarks, you can download our Trademarks Guide.

David Canton is a business lawyer and trademark agent at Harrison Pensa with a practice focusing on technology, privacy law, technology companies and intellectual property. Connect with David on LinkedIn and Twitter.