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Bricks and Mortar or Online Order? Federal Court of Appeal decides what Constitutes Trademark “Use” in Association with Hotel Services

Over the last few decades, Courts in Canada have grappled with whether “hotel services” and “motel services” can be performed in Canada in the absence of physical hotel premises in the country. In its decision in Hilton Worldwide Holding LLP v. Miller Thomson LLP (2018 FC 89) (“Hilton Worldwide FC”),  the Federal Court of Canada (the “Court”) found that, in some circumstances, such services can indeed be performed in Canada, even in the absence of a physical hotel in Canada. On appeal to the Federal Court of Appeal (the “Court of Appeal”), in  Miller Thomson v Hilton Worldwide Holding LLP, (2020 FCA 134) (“Hilton Worldwide FCA”), the Court of Appeal agreed and affirmed most of the earlier findings of the Court.

The Hilton Worldwide decisions involve appeals of a decision of the Registrar of Trademarks in which Miller Thomson LLP sought cancellation of a registration for the WALDORF-ASTORIA trademark on the basis of non-use within the previous three years. “Use” in this context requires the owner of a registration to show that its services were performed in Canada during the relevant period of time. Hilton Worldwide was unsuccessful before the Registrar, but successfully overturned that decision on appeal to the Court.

The decision attracted interest among trademark owners and practitioners in Canada, as providers of hotel and motel services can face difficulties showing use in Canada; such providers must physically deliver aspects of these services in a particular geographical location, but often primarily cater to consumers who reside in, and place orders from, outside of that location. Courts have not always taken a sympathetic view of this challenge: in Motel 6 Inc. v. No. 6 Motel Ltd. [1982] 1 FC 638 (FCTD) (“Motel 6”), the Court held that motel services were not “performed” in Canada, even where evidence showed that Canadians stayed in motels located in the US and booked reservations for those motels from Canada. According to the Court in Motel 6, there must be some business facility in Canada for use of a trademark to occur in Canada in association with “motel services”.

Likewise, some recent decisions of the Canadian Trademarks Opposition Board (“TMOB”) have distinguished between “hotel services” and “hotel reservation services” in similar non-use proceedings. The TMOB has held that, where both of these services are included in a statement of registered services, the “hotel services” must be performed by a hotel physically located in Canada, whereas “hotel reservation services” can be performed online, for example, through the use of a hotel’s website in Canada or through third party booking services used by Canadians (see, for instance, Stikeman Elliott LLP v. Millennium & Copthorne International Ltd., 2015 TMOB 231 (“M Hotel”) and Maillis v Mirage Resorts Inc, 2012 TMOB 220). These TMOB decisions follow comments in obiter in Motel 6 (at para. 40) which suggest that the Court made a similar distinction between “motel reservation services” as distinct from “motel services”.

However, in Hilton Worldwide FC, the WALDORF-ASTORIA registration included claims for only “hotel services.” The Court also found that, at the time the registration issued in 1998, the Canadian Intellectual Property Office’s Goods and Services Manual (the “Manual”) did not list separate entries distinguishing “hotel services” from related services such as hotel booking services or hotel reservation services. In part based on this evidence, the Court found that “hotel services” could have included hotel reservation services, which were offered online to Canadians in conjunction with a rewards program which could be used by consumers in Canada. The Court of Appeal affirmed this finding, concurring that “it was an error for the Registrar to interpret the scope of a registration from the pre-internet era in light of the wording of the current version of the Manual” (at para. 104).

As a result of this expanded understanding of the description “hotel services”, the Court found that Canadians had received a benefit from services that fell within “hotel services” and that the registered owner had performed these services through direct contact with Canadians. These services included allowing for booking reservations online, and by allowing guests to pre-pay for stays at the hotel’s US location. As found by the Court of Appeal, “as long as some consumers, purchasers or members of the public in Canada receive a material benefit from the activity in issue, it will amount to the performance of the service in this country” (at para. 115). The Court found – and the Court of Appeal affirmed – that the provision of these benefits to approximately 1300 Canadians distinguished this case, on the facts, from prior decisions such as M Hotel.

Notably, the Court of Appeal found that the Court erred in finding that providing “loyalty points” to guests who booked rooms via an associated loyalty program (redeemable at non-WALDORF-ASTORIA hotels in Canada) constituted performance of a service in Canada. There was no evidence that these points were earned at the time a room is booked, rather than when a customer stayed at the hotel – the latter action of which would occur outside of Canada (at para. 134). Yet the Court of Appeal found that, in any event, Canadians can and do enroll separately in the loyalty program, which constitutes performance of a service in Canada (para 136). As a result, the Court of Appeal found this error to be palpable but not overriding, and therefore the error had no effect on the outcome of the Court’s decision.

In addition, the Court of Appeal noted that older decisions should be considered in light of the significant technological changes which have occurred in the commercial landscape over the past few decades (and on this front, the Court of Appeal quoted one of my prior articles on this point, at para 141 of the decision). For example, Motel 6 dates from the 1980s. The Court of Appeal noted that subsequent changes have occurred since then which affect the way people perform services and receive the benefit of those services:

The internet was in its infancy at that time, and was not available to the general public in the way that it is now. There was also no concept of online commerce when the definition of “use” was introduced into the Trademarks Act in 1953, and that definition has remained substantially the same since that time (at para. 140).

As a result, the concept of trademark use “must adapt to accord with 21st century commercial practices” (at para. 142).

Comment:

The decisions in Hilton Worldwide FC and Hilton Worldwide FCA show the difficulties some owners of registered trademarks face when required to show “use” of their trademarks in Canada, particularly where the nature of their industry or the performance of their services online can make it difficult to show “use” through the traditional means of doing so. However, these decisions also show that the Courts are aware of these challenges, and willing to consider the applicable law in a flexible manner which accords with the realities of current commercial practice. That said, there are limits to the concept of trademark use, and this concept is not “open-ended”. Ultimately, subsequent decisions on this point will highly depend on the quality of the evidence submitted by the owner, and the specific nature of the facts at issue.

CIPO Issues Blanket Extension to Trademark Deadlines (Again): Until August 31, 2020

After previously announcing what was supposed to have been the final (for now) blanket extension of time, the Canadian Intellectual Property Office has made yet one further automatic extension, effectively until August 31, 2020. This is to account both for continuing COVID-19 disruptions and certain critical maintenance to CIPO’s systems, which was to occur at the end of the previous (final) automatic extension and would have meant CIPO’s online and fax services would have been unavailable for a period.

These extensions now effectively cover deadlines falling between March 16, 2020 and August 30, 2020. No further automatic extensions are anticipated in the short term, though should the evolving situation with the pandemic warrant, we may see these again. As we noted when CIPO made its last announcement, further extensions of time may still be available on a case-by-case basis, due to ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’ (in addition to any standard extensions of time that may be available).

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated August 19, 2020), can be found here.

CIPO Issues Notice of Final Blanket Extension (for now)

The Canadian Intellectual Property Office has just published notice of its decision to further extend the “designated days” period on account of continuing COVID-19 disruptions. Since the onset of the pandemic in Canada in early March, CIPO has issued nine such notices, effectively creating a “blanket extension” of all CIPO deadlines arising since then.  This latest extension will expire on August 21, 2020, which means all deadlines falling between March 16 and August 23 will now come due on August 24—assuming, of course, they haven’t already been addressed.

In a departure from its prior notices, CIPO has indicated that this is the last blanket extension it intends to grant for the time being. However, CIPO’s standard extension practice notice does provide for extensions of time in ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’, so it may be possible for applicants to obtain further extensions on individual matters. Some explanation of unique hardship, however, will likely be necessary to justify the extension request; pointing merely to the existence of the pandemic will likely not suffice. Careful, case-by-case consideration should be given to the deadline faced to ensure the appropriate response.

CIPO Again Extends Trademark Deadlines Due to COVID-19: Until August 10, 2020

Now for the eight time, the Canadian Intellectual Property Office has again extended its earlier automatic extensions on account of continuing COVID-19 disruptions, until at least August 10, 2020 (the previous and seventh extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and August 9, 2020. Yet again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated July 15, 2020), can be found here.

Yet Another CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 20, 2020

In light of the continuing COVID-19 disruptions, the Canadian Intellectual Property Office has again extended its earlier automatic extensions, now until at least July 20, 2020 (the previous and sixth extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 19, 2020. Again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 30, 2020), can be found here.

Sixth CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 6, 2020

Once again, in light of COVID-19 disruptions, the Canadian Intellectual Property Office has extended its earlier automatic extensions until at least July 6, 2020 (the previous extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 5, 2020. CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 9, 2020), can be found here.

Further CIPO Extension to Trademark Deadlines Due to COVID-19: Until June 15, 2020

The Canadian Intellectual Property Office has yet again (the previous and fourth extension discussed here) extended its earlier automatic extensions until at least June 15, 2020. These extensions, to deal with COVID-19 disruptions, now effectively cover deadlines falling between March 16, 2020 and June 14, 2020. As CIPO has not indicated this is the last extension, further extensions are still anticipated. CIPO also indicates that it is “working to eliminate any residual delays in services that have occurred as a result of the ongoing COVID-19 outbreak”, though delays are still occurring.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated May 26, 2020), can be found here.