Non-Canadian hoteliers have reason to celebrate following the release of the Federal Court of Canada's anticipated decision in Hilton Worldwide Holding LLP v Miller Thomson LLP (2018 FC 895).

Facts

Remaining consistent with its previous decision (for further details please see "No store, no problem: broad interpretation of 'use' advantageous for foreign retail trademark owners") in Dollar General Corporation v 2900319 Canada Inc (2018 FC 778), the Federal Court of Canada in Hilton Worldwide affirmed that providing hotel services does not require a physical hotel in Canada to constitute use of a trademark in Canada. Provided that Canadians can receive a meaningful benefit from the provision of the owner's hotel services, offering incidental or ancillary services without the presence of a physical hotel in Canada may be sufficient to constitute use of the trademark in connection with the provision of hotel services in Canada.

In Hilton Worldwide, the court overturned the registrar's decision to remove Hilton's registration for the trademark WALDORF-ASTORIA in association with hotel services where the owner did not have a bricks-and-mortar hotel in Canada. The owner operated an interactive website, a worldwide registration service, offered discounts to customers who pre-paid for rooms and loyalty programmes, all of which services were accessible to Canadians and were associated with the registered trademark WALDORF-ASTORIA. However, the registrar found that "if someone says they offer 'hotel services' in Canada, the average consumer is expecting a hotel, not merely access to hotel reservations services or a hotel loyalty program".

Decision

In finding that the owner's hotel registration and loyalty programmes constituted providing hotel services in Canada, the court reaffirmed its position that the term 'services' should be liberally construed and can include primary, incidental or ancillary services.(1) Further, the court noted that the scope of a trademark registration must be considered in light of the ordinary meaning of the words in the registration itself and should be viewed from the perspective of the trademark owner and customer.

Accordingly, in Hilton Worldwide, the court took into consideration that the scope of hotel services has expanded greatly since the time of the original registration, particularly in light of the developments in online commerce. Indeed, the court stated that:

the meaning of 'hotel services' must adapt to reflect the fact that an ordinary customer would expect to be able to book a hotel room online today, either directly or through the intermediary of a service dedicated to travel arrangements.

Further, the court established that in interpreting the scope of a service, the registrar should consider the evidence submitted in the case, rather than relying on common sense or the current version of the CIPO Goods and Services Manual.

The Hilton Worldwide and Dollar General decisions also reverse a long-standing trend by the Trademarks Opposition Board of ignoring ancillary services as being sufficient to constitute use in Canada.

Comment

While each case will ultimately depend on its facts, the recent Dollar General and Hilton Worldwide decisions signal that the court is maintaining consistency in its broad interpretation of use of a trademark in connection with services and provides comfort for non-Canadian businesses that have no physical presence in Canada.

For further information on this topic please contact Mark Evans at Smart & Biggar/Fetherstonhaugh's Toronto office by telephone (+1 416 593 5514) or email (mkevans@smart-biggar.ca). Alternatively, please contact Nora Labbancz at Smart & Biggar/Fetherstonhaugh's Ottawa office by telephone (+1 613 232 2486) or email (nalabbancz@smart-biggar.ca)

Endnotes

(1) See, for example, TSA Stores Inc. v The Registrar of Trade-marks, 2011 FC 273.

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