Canadian Internet Law Update – 2018*

A. Trademarks

1. Internet Use of Trademark

Hilton Worldwide Holding LLP v. Miller Thomson, 2018 FC 895, involved an appeal from a decision of the Registrar of Trademarks expunging the registration of the "Waldorf-Astoria" trademark registered for use in association with "hotel services" because there was no physical "Waldorf-Astoria" hotel in Canada. The court confirmed the well-established principle that in order for a trademark to be used in association with services "it is essential some aspect of the services must be offered directly to Canadians or performed in Canada". The court held that determining whether services are performed in Canada requires a case-by-case assessment and analysis of the scope of the services and the nature and benefits delivered to people physically present in Canada. The court held that the "Waldorf-Astoria" trademark had been used in association with "hotel services", even though there was no physical hotel operated under that