Law & Practice

CANADA: Trademark ‘Use’ Without a Brick-and-Mortar Location

Published: October 14, 2020

Diana Mansour

Diana Mansour Gardiner Roberts LLP Toronto, Ontario, Canada INTA Bulletins—North America Subcommittee

Verifier

Cory Furman

Cory Furman Furman IP Law & Strategy PC Regina, Saskatchewan, Canada INTA Bulletins—North America Subcommittee

In its decision in Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134, dated September 9, 2020, the Canadian Federal Court of Appeal provided guidance on the concept of “use” of a trademark with respect to services in the absence of a “brick-and-mortar” location in Canada.

Hilton Worldwide Holding LLP (Hilton) is the owner of the WALDORF ASTORIA trademark, which is registered in Canada for use in association with “hotel services.” The Waldorf Astoria is a well-known luxury hotel with locations around the world; however, there has never been a brick-and-mortar Waldorf Astoria hotel in Canada.

At Miller Thomson’s request, the Registrar of Trademarks issued a notice to Hilton pursuant to Section 45 of the Trademarks Act, requiring that Hilton demonstrate use of WALDORF ASTORIA in Canada in association with “hotel services” during the relevant period (October 23, 2011‒October 23, 2014), or reasons for non-use. During the relevant period, people in Canada who visited the Hilton website would see the WALDORF ASTORIA mark, 41,000 people with addresses in Canada stayed at Waldorf Astoria hotels, and about 1,300 people from Canada received a discounted room rate and received email confirmation of their booking displaying the WALDORF ASTORIA trademark. The court found that the evidence showed there were benefits available to people in Canada, over and above the eventual enjoyment of their actual stay in a brick-and-mortar Waldorf Astoria hotel.

The court noted that the term “services” is to be liberally interpreted and that “services” may include those that are “incidental” or “ancillary” to the primary service identified in the registration. Also, it is essential that some aspect of the registered service is offered directly to Canadians or be performed in Canada. In addition, people must be able to derive a tangible, meaningful benefit from the use of a mark in association with the registered service in Canada in order to establish use of the mark in Canada.

The court also noted that the meaning of terms used in trademark registrations can evolve over time, particularly where there have been significant technological advancements that radically change the manner in which services are offered to consumers. Requirements for “use” must adapt to current commercial practices with the caveat that “use” cannot be completely open-ended.

The following are examples of online services that may assist in establishing use of a mark in Canada:

  • Evidence of website metrics, such as the number of times that a website displaying a mark has been accessed by people in Canada;
  • Evidence of the number of Canadians who have availed themselves of the online services offered in conjunction with the mark;
  • Sales figures of the value of the services that have been provided to Canadian consumers over the Internet;
  • Evidence showing that the content offered by the website is stored on servers located in Canada;
  • Evidence showing that consumers in Canada are targeted with advertising; and
  • Evidence that prices are listed in Canadian dollars or other indicators demonstrating that the website is directed to Canadian customers.

The following are examples of online services that would not be enough to establish trademark use in Canada:

  • Bare assertions of use;
  • Mere display of a mark on a website from outside Canada; and
  • Ability of individuals in Canada to passively view content on a foreign website.

At a minimum, a sufficient degree of interactivity between the trademark owner and a Canadian consumer must be shown to amount to use of a mark in Canada in conjunction with services over the Internet. The court found that there was use and maintained the registration of WALDORF ASTORIA for “hotel services,” despite the fact that there was no brick-and-mortar WALDORF ASTORIA branded hotel in Canada.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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