Trademarks Owners Be Warned — Certain Services May Require Bricks-And-Mortar Location In Canada

The cautionary lesson emerging from a rash of Trademark Opposition Board decisions over the past several years is that owners of registrations for services, such as hotel services, without bricks-and-mortar establishments in Canada should ensure that their registrations also cover "reservation services", or other services that are rendered in Canada. Otherwise, such registrations may be at risk of expungement through summary non-use cancellation proceedings pursuant to Section 45 of the Trade-marks Act (the "Act"). That section permits any person to request the Registrar to send a notice to the owner of a registration more than three years old, requiring proof of use in Canada or extraordinary reasons to excuse non-use, failing which the registration will be expunged.

The recent decision in Stikeman Elliott LLP v Millennium & Copthorne International Limited, 2017 TMOB 34, demonstrates challenges facing trademark owners in the e-commerce context when it comes to "hotel services". This case involved a summary non-use cancellation proceeding against registrations for the trademarks STUDIO M HOTEL and STUDIO M HOTEL & Design, both for "hotel services and reservation services in relation to hotels". The hotel itself was located in Singapore, but reservations could be made by customers in Canada through the hotel's website, and the hotel offered event planning services to Canadians arranging events at the hotel. Hearing Officer Bene concluded that the website's reservation platform, which the evidence showed was accessed by customers in Canada during the relevant period, constituted "use" sufficient to maintain the registration for the reservation services, but that without a physical "bricks-and-mortar" hotel in Canada, "hotel services" would be expunged, notwithstanding any "ancillary" services available to customers in Canada, like event planning.

The decision turned on whether the "hotel services" were available to be performed in Canada. Section 4(2) of the Act deems a mark to be "used" in association with services if "used or displayed in the performance or advertising of those services", but the jurisprudence is clear that mere advertising in Canada is not sufficient. What constitutes a "service" is not defined in the Act. Past court decisions have held that where the performance of the advertised services could only be completed by travel abroad, there is no use "in" Canada (see Marineland Inc v Marine Wonderland and Animal Park Ltd...