In a widely anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate “use” of a trademark in Canada in association with “hotel services” in the absence of a Canadian brick-and-mortar hotel. While the Federal Court of Appeal’s decision in Miller Thomson LLP v Hilton Worldwide Holding Inc., 2020 FCA 134, is not the first to analyze the Internet’s impact on “use” of a trademark, this case provides important guidance to brand and trademark owners offering services to consumers in Canada without a physical brick-and-mortar location.
Noelle Engle-Hardy will discuss this case and how it changes the analysis of trademark “use” via the internet, as well as her views on likely impact of this decision from the perspectives of both trademark prosecution and litigation, and what strategies we may see brand owners and their legal counsel adopt in Canada to obtain and protect registered trademark rights without a physical Canadian location.
