Federal Court Of Appeal Reviews Meaning Of "Use" Of A Trademark In Canada

• Published date: 15 October 2020
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Media, Telecoms, IT, Entertainment, Trademark, Trials & Appeals & Compensation, Hotels & Hospitality
• Law Firm: Norton Rose Fulbright Canada LLP
• Author: Mr Mark Davis and Caroline Henrie

In Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134, the Canadian Federal Court of Appeal recently confirmed that a trademark associated with "hotel services" was valid despite no brick-and-mortar presence in Canada. More specifically, the Court acknowledged that providing incidental or ancillary services to the registered service can be considered to be a performance of the registered service itself. Furthermore, the FCA found that the ordinary or commercial meaning of a registered service may change over time, with technological advancements.

Background

Hilton Worldwide LLP (Hilton) owns the WALDORF ASTORIA trademark, which has been registered in Canada in association with "hotel services" since 1988. At Miller Thomson LLP's (Miller Thomson) request, the Registrar of Trademarks (Registrar) issued a notice to Hilton, pursuant to section 45 of the Trademarks Act (the Act), requiring Hilton to demonstrate use of the mark WALDORF ASTORIA in association with "hotel services" in Canada between October 23, 2011 and October 23 2014 (the Relevant Period).

The Registrar reviewed the evidence presented by Hilton including evidence of its website and registration service discounts for customers pre-paying for rooms and its loyalty reward points system, HILTON HHONORS. Ultimately, the Registrar found that the absence of a brick-and-mortar WALDORF ASTORIA hotel in Canada was fatal to Hilton's registration. The Registrar found that it is "contrary to common sense to equate the ability to make hotel reservations or other bookings with the operation of a hotel".

The Federal Court allowed Hilton's appeal of the Registrar's decision, noting several errors.

First, the Registrar failed to consider the evidence presented on the ordinary commercial meaning of "hotel services" in the hotel industry, relying instead on "common sense". Second, the Registrar failed to consider and follow binding authority on the interpretation of the term "services" which have concluded that the Act makes no distinction between primary, incidental or ancillary services. Third, the Registrar relied on a current version of the Goods and Services Manual (Manual) to interpret the scope of a 1988 Registration.

Miller Thomson appealed the FC's decision.

Use of "hotel services"

The Federal Court of Appeal concluded that the Federal Court had applied the correct standards and legal tests in its analysis. The Court of Appeal then reviewed the Federal Court's findings on the meaning of...