FCA Ruling Brings Trademark Law Into 21st Century

In September 2020, the Federal Court of Appeal (FCA) released its highly anticipated decision in Miller Thomson LLP v Hilton Worldwide Holding LLP (Hilton Worldwide), affirming the Federal Court's ruling that found Hilton's trademark registration to be valid.

The decision in Hilton Worldwide has far-reaching implications for trademarking online services. Following the FCA's reasoning, any service that provides a "material benefit" to Canadians, including services offered online, may be eligible to acquire a registered trademark.

Background

In Hilton Worldwide, the law firm Miller Thomson challenged Hilton's WALDORF ASTORIA trademark registration in association with "hotel services." The Waldorf Astoria is a famous and historical hotel in Manhattan that has since expanded to add many new locations across the world – although there is not currently a Waldorf Astoria hotel in Canada.