Online services may constitute use of a trademark of “hotel services” in Canada – Intellectual Property


Canada: Online services may constitute use of a “hotel services” mark in Canada

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A welcome decision for hotel brand owners: “hotel services” and “motel services” can potentially be provided in Canada in the absence of physical hotel premises, according to the Federal Court of Appeal in Miller Thomson v Hilton Worldwide Holding LLP2020 CIF 134 (“Hilton 2020“), which confirms the decision of the Federal Court,
2018 CF 895(“Hilton 2018“).

The case concerns the famous luxury hotel brand WALDORF-ASTORIA. Hilton owns the registered Canadian trademark for WALDORF-ASTORIA, but does not operate any physical WALDORF-ASTORIA hotels in Canada. Services offered to Canadian consumers are primarily online, including reservation services and rewards point services. Miller Thomson requested the cancellation of the WALDORF-ASTORIA mark for non-use.

Before Hilton 2018 decision, the case law distinguished between “hotel/motel services” and “hotel/motel reservation services”, emphasizing that “hotel services” must be provided by a hotel physically located in Canada. Hilton’s WALDORF-ASTORIA registration only covered “hotel services“. Therefore, applying the case law, the Trademarks Opposition Board concluded that Hilton had made no use of the mark in Canada.

However, noting that at the time of registration in 1998, “hotel services” were not distinguished from other related services, the Federal Court concluded that “hotel services” could include hotel reservation services. The Court of Appeal upheld this finding and held that it would be an error “to interpret the scope of a pre-Internet-era record in light of the wording of the current version of the Handbook.” Based on the evidence of Hilton’s reservation services and rewards point programs, the Court concluded that Hilton did use the WALDORF-ASTORIA mark in connection with “hotel services” in Canada.

Originally published by Oyen Wiggs, September 2020

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