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Online Services Can Constitute Use of Trademark of “Hotel Services” in Canada

A welcoming decision for hotel trademark owners: “hotel services” and “motel services” can potentially be performed in Canada in the absence of physical hotel premises, according to the Federal Court of Appeal in Miller Thomson v. Hilton Worldwide Holding LLP, 2020 FCA 134 (“2020 Hilton”), which affirms the Federal Court’s decision, 2018 FC 895 (“2018 Hilton”).

The case involves the well-known luxury hotel trademark WALDORF-ASTORIA. Hilton owns the Canadian trademark registration for WALDORF-ASTORIA but does not operate any brick-and-mortar WALDORF-ASTORIA hotel in Canada. The services offered to Canadian consumers are primarily online, including reservation services and reward points services. Miller Thomson sought cancellation of the WALDORF-ASTORIA mark for non-use.

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

However, noting that at the time of registration in 1998 “hotel services” was not distinguished from other related services, the Federal Court found that “hotel services” could have included hotel reservation services. The Court of Appeal affirmed this finding and held that it would be an error to “interpret the scope of a registration from the pre-internet era in light of the wording of the current version of the Manual.” On the evidence of reservation services and reward points programs presented by Hilton, the Court held that Hilton did use the mark WALDORF-ASTORIA in relation to “hotel services” in Canada.

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