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ARTICLE · 27 SEPTEMBER 2018

Federal Court Issued New Guidance On Trademark Use

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The Federal Court has issued its latest decision interpreting the "use" requirements under Section 45 of the Trademarks Act (the Act) in the digital millennium.

CanadaIntellectual Property
Steven Kennedy
Steven Kennedy
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The Federal Court has issued its latest decision interpreting the "use" requirements under Section 45 of the Trademarks Act (the Act) in the digital millennium.

Hilton Worldwide Holding LLP v Miller Thomson, 2018 FC 895 was an appeal from an order of the Registrar of Trademarks (Registrar) expunging the trademark WALDORF-ASTORIA (the Mark) from the register under Section 45 of the Act. To maintain its registration in the Section 45 proceeding, Hilton had to demonstrate use of the Mark between 2011 and 2014 in association with "hotel services." Hilton did not have a physical, "bricks and mortar" WALDORF-ASTORIA hotel in Canada.

Before the Trademarks Opposition Board (the Board), Hilton filed an affidavit describing how Canadians made reservations to stay at WALDORF-ASTORIA hotels through third-party booking systems, directly through Hilton's website, and through a toll-free number in Canada. Hilton's evidence showed that during the relevant period, approximately

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