Use Of A Mark For "Hotel Services" Does Not Require Brick-and-Mortar Hotel In Canada

Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134

Background

The first WALDORF-ASTORIA hotel opened in New York City in the 1930s, and it was acquired by Hilton Hotels Corporation in 1949, the predecessor to Hilton Worldwide Holding LLP ("Hilton"). There are now a number of WALDORF-ASTORIA hotels in the United States and in major cities around the world. However, there has never been a WALDORF-ASTORIA hotel located in Canada.

The Canadian registration for the WALDORF-ASTORIA trademark for "hotel services" in Class 43, owned by Hilton, was challenged on the basis of non-use before Canada's Registrar of Trademarks ("Registrar").  The challenger, Miller Thomson LLP, is a law firm that represents a hotel client that had been seeking to register various "WALDORF" formative marks.  Hilton opposed these marks, and Miller Thomson filed a request with the Registrar for Hilton to demonstrate use of its 1988 registration for WALDORF-ASTORIA in association