The author would like to thank Melissa Wells for her assistance in preparing this article.

Last week, in Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp., 2021 FC 156, the Federal Court dismissed an application by Hidden Bench Vineyards & Winery Inc. seeking a declaration that it is the owner of the unregistered trademark "LOCUST LANE" and relief for alleged passing off by a neighbouring winery, Locust Lane Estate Winery Corp.

While the Court agreed Hidden Bench had used LOCUST LANE as a trademark, that use had not established sufficient secondary meaning in the marketplace to ground an action in passing off. Given Hidden Bench's lack of a registration, that left Hidden Bench without a means to prevent use of the same mark by Locust Lane.

Background

Hidden Bench was founded in 2003 and owns three vineyards in Beamsville, Ontario, where it produces all of its wines onsite and sells those products throughout Canada and internationally. In 2019, Locust Lane purchased a property adjacent to Hidden Bench's property and was issued licences to operate as a winery.

On January 6, 2020 Hidden Bench notified Locust Lane that it claimed ownership to LOCUST LANE as a trademark. It then filed a trademark application on January 31, 2020. However, Locust Lane continued to use its stylized fingerprint tree and the words "Locust Lane Estate Winery" on its entrance signs and wine labels. Locust Lane began selling such wine products in August 2020. The labels used by each contained Locust Lane, but were otherwise relatively distinct:

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