September 28, 2018
The Federal Court has recently affirmed that Hilton’s trademark in words, WALDROF-ASTORIA, is used in Canada for “hotel services” even though the WALDORF-ASTORIA hotel operates only in New York City. The room reservation services and loyalty points program that Canadians access via Hilton’s U.S. WALDORF-ASTORIA web site are sufficient to comprise “hotel services” for the purpose of the Trade-marks Act.
The matter arose in the context of a “section 45 proceeding” under the Trade-marks Act. In response to a request of Miller Thomson, the Registrar of Trade-marks issued a notice requiring Hilton to demonstrate its use of WALDORF-ASTORIA in the previous three years in association with the “hotel services” for which this trademark had been registered. In terms of services offered to Canadians, Hilton pointed out that it displayed WALDORF-ASTORIA in the operation of an interactive web site where Canadians were offered worldwide registration services, discounted room and a rewards program. The Registrar rejected Hilton’s arguments and expunged the trademark because, insofar as “hotel services” themselves were concerned, there was no WALDORF-ASTORIA in Canada.
Hilton appealed to the Federal Court, asserting that the trade-mark displayed at the web site had indeed been used because people in Canada benefited from Hilton’s reservation services, discounted room rates, and loyalty program, all offered at the web site, and that these offerings were encompassed by the term, “hotel services”.
The Federal Court agreed and reversed the decision of the Registrar. The Court held that “use” of a trademark for hotel services in Canada does not require that the hotel have a physical presence in Canada and that the term, “services” is to be liberally construed to include all , incidental or ancillary services to the primary services of, in this case, operating a hotel. In so doing, the Federal Court indicated its intention to recognize the prevalence of online commerce and the expanding commercial realities for both businesses and customers.