Federal Court Of Appeal Confirms That Trademark Services Should Be Liberally Construed

• Published date: 12 October 2020
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Media, Telecoms, IT, Entertainment, Trademark, Trials & Appeals & Compensation, Hotels & Hospitality
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

A recent decision of the Federal Court of Appeal [2020 FCA 134] has confirmed a trial decision [2018 FC 895] which considered the concept of use of a trademark in association with services when the method of distribution has changed.

Under the Trademarks Act a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. However, the mere advertisement of services in Canada, where no aspect of the services themselves are performed or delivered in Canada, does not constitute use within the meaning of the Act.

The meaning of terms used in trademark registrations can evolve. This is especially so where, as here, there have been significant technological advancements that have changed the way services are offered.

If warranted on the facts of a specific case providing a service that is incidental or ancillary to a registered service can be considered performance of the registered service itself. In this type of case the key is to file the evidence to support such a conclusion.

From a brand owner's viewpoint it is preferable to deal with changes of this nature by obtaining new registrations in association with the new means of distribution to avoid the prospect of uncertain litigation.

Facts

The requesting party caused a notice under s. 45 of the Trademarks Act to be sent to Hilton Worldwide Holding LLP (Hilton) the registered owner of the trademark WALDORF-ASTORIA. The notice required Hilton to show its use of the mark at any time within the three-year period immediately preceding the issuance of the notice.

The trademark WALDORF-ASTORIA is registered for use in association with "hotel services". Hilton claimed to have used the mark in association with hotel services in Canada since at least 1988 and filed evidence as to its use of the mark.

While there was no WALDORF-ASTORIA branded hotel physically located in Canada during the relevant period, the evidence showed there were several benefits available to customers in Canada, and that many people in Canada took advantage of such benefits. Customers in Canada would see the WALDORF-ASTORIA trademark when they visited the Hilton website, where they could book reservations. The WALDORF-ASTORIA trademark appeared on the website at the time of making the booking and payment, and on email confirmations sent to customers.

During the relevant period, 41,000 people with addresses in Canada stayed at a WALDORF-ASTORIA hotel, generating approximately $50 million in revenue. In addition, 1,300 people from Canada received a discounted room rate in exchange for paying for the hotel reservation in advance. These individuals received email confirmation of their booking, again showing the WALDORF-ASTORIA trademark.

Decision of the Trademarks Opposition Board

The Hearing Officer ruled that the absence of a WALDORF-ASTORIA hotel in Canada was fatal to Hilton's claim it had used the trademark for "hotel services" in Canada during the relevant period. To show use of the trademark for such services required a physical location in Canada. Similar conclusions had been reached in recent...