In the recent case of Hilton Worldwide Holdings LLP v Miller Thomson 2018 FC 895, the Federal Court of Canada affirmed that the provision of “hotel services” does not require a physical presence in Canada for the purposes of demonstrating “use” of a trademark.
In Hilton Worldwide, the mark of issue was WALDORF-ASTORIA. The Court overturned the Registrar’s decision to expunge the mark in association with “hotel services” where the owner did not have a “bricks-and-mortar” location in Canada.
Instead, the owner had an interactive website which offered worldwide registration, discounts to customers who pre-paid for rooms as well as loyalty programs. The Federal Court found that services such as registration and loyalty programs did constitute providing “hotel services” in Canada.
This case follows the recent Dollar General case maintaining its broad interpretation of “use” with services.
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