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Trademarks - 'Use'. Miller Thomson LLP v. Hilton Worldwide Holding LLP
In Miller Thomson LLP v. Hilton Worldwide Holding LLP (Fed CA, 2020) the Federal Court of Appeal discussed the importance of 'use' in trademark law:[6] Unlike other forms of intellectual property, use of a trademark is essential, and is fundamental to trademark rights: HomeAway.com, Inc. v. Hrdlicka, 2012 FC 1467, [2012] F.C.J. No. 1665 at paras. 11–12. As the Supreme Court of Canada noted in Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772 at para. 5, "“in trade-marks the watchword is ‘use it or lose it’”". Indeed, the statutory definition of "“trademark”" in section 2 of the Act is "“a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others […]”" [emphasis added].
[7] In accordance with subsection 4(2) of the Act, a trademark will be deemed to be used in association with services "“if it is used or displayed in the performance or advertising of those services”". That said, the mere advertising of services in Canada will not constitute use in Canada in association with a service. Some aspect of the services must be performed or delivered in Canada: Porter v. Don the Beachcomber, [1966] Ex.C.R 982, 48 C.P.R. 280 at para. 17; Marineland Inc. v. Marine Wonderland and Animal Park Ltd., [1974] 2 FC 558.
[8] While foreign trademark owners can register their marks in Canada and thereby enjoy the benefits of exclusivity, maintenance of a registration depends on the use of the mark in Canada.
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