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TRADE-MARKS - Expungement - Grounds - Non use

Wednesday, October 14, 2020 @ 3:48 AM  


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Appeal by Miller Thompson from a decision setting aside the Registrar’s decision and finding that the respondent had established use of the WALDORF ASTORIA mark in Canada for the purposes of s. 45 of the Trademarks Act. There was never a Waldorf Astoria hotel in Canada. The respondent was the owner of the WALDORF ASTORIA trademark which was registered for use in association with hotel services. The respondent claimed to have used the Mark in Canada in association with hotel services since at least 1988. The appellant’s client had outstanding applications to register trademarks for “WALDORF”, “THE WALDORF”, “WALDORF HOTEL” and other, similar names. At the appellant’s request, the Registrar issued a notice to the respondent requiring that it demonstrate use of the Mark in Canada in association with hotel services between 2011 and 2014. The respondent argued the term hotel services was understood in the hotel industry to include reservation services, booking and payment services and that customers could book a stay at the respondent’s US Waldorf Astoria hotels in Canada by using the respondent’s booking service. People in Canada would see the WALDORF ASTORIA mark when they visited the Hilton website, and could book reservations in several ways, either directly with the hotel over the internet, through a third-party service provider, or via a Canadian toll-free number. The Mark would also appear on the e-mails sent to customers confirming their reservations. The Registrar concluded that the absence of a bricks and mortar Waldorf Astoria hotel in Canada was fatal to the respondent’s claim that it had used the Mark in Canada in association with hotel services during the relevant period. The Registrar found that in ordinary commercial terms, booking, planning and reservation services were not hotel services. The Registrar found that if a customer had to leave Canada to enjoy the service, it was not a hotel service performed in Canada. While customers could book hotel rooms at Waldorf Astoria hotels from within Canada, the Registrar concluded that the performance of Hilton’s hotel services could only be completed by customers travelling outside of Canada. As a result, no use of the Mark in Canada in association with hotel services had been established. The Federal Court considered that a hotel owner could establish use of a trademark without the presence of a bricks and mortar hotel in Canada. The Federal Court noted that the concept of services was to be liberally interpreted, and that services could include those that were incidental or ancillary to the primary service identified in the registration. The Court found the Registrar failed to consider the only evidence that had been submitted with respect to the ordinary commercial understanding of the term hotel services, and that she failed to follow binding authority establishing that the scope of services included primary, incidental and ancillary services. The Court also found that the Registrar erred in applying the current version of the Manual to interpret the meaning of a registration dating from 1988 and that the Registrar erred by failing to consider the actual words used in the registration itself.

HELD: Appeal dismissed. The Federal Court did not err in finding that there had been use of the Mark in Canada. The Court correctly understood the test for use for the purposes of the s. 45 analysis. The Federal Court did not err in finding that the failure of the Registrar to acknowledge or come to grips with the only direct evidence before her as to the ordinary commercial meaning of the term hotel services was a material omission that warranted the Court’s intervention. The Federal Court did no err in finding that the term hotel services included ancillary services such as reservation and payment services, in addition to access to hotel rooms. The jurisprudence established that if some consumers, purchasers or members of the public in Canada received a material benefit from the activity in issue, it would amount to the performance of the service in this country.

Miller Thomson LLP v. Hilton Worldwide Holding LLP, [2020] F.C.J. No. 902, Federal Court of Appeal, W.W. Webb, D.G. Near and A.L. Mactavish JJ.A., September 9, 2020. Digest No. TLD-October122020003