OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

Citation: 2017 TMOB 149

Date of Decision: 2017-10-31

IN THE MATTER OF A SECTION 45 PROCEEDING

	Ridout & Maybee LLP	Requesting Party
and
	Sfera 39-E Corp.	Registered Owner
	TMA820,427 for BLUE DIAMOND	Registration

[1]  At the request of Ridout & Maybee LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) on March 24, 2015 to Sfera 39-E Corp. (the Owner), the registered owner of registration No. TMA820,427 for the trade-mark BLUE DIAMOND (the Mark).

[2]  The Mark is registered for use in association with “Hotel and restaurant services”.

[3]  The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with the services specified in the registration, at any time between March 24, 2012 and March 24, 2015. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.

[4]  The relevant definition of “use” in association with services is set out in section 4(2) of the Act as follows:

4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[5]  It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in section 45 proceedings is quite low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the services specified in the registration during the relevant period.

[6]  With respect to services, the display of a trade-mark on advertising is sufficient to meet the requirements of section 4(2) when the trade-mark owner is offering and prepared to perform those services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)]. In other words, advertising in Canada alone is insufficient to demonstrate use; at the very least, the services have to be available to be performed in Canada. By way of example, use of a trade-mark on advertising in Canada of services only available in the United States does not satisfy the provisions of section 4(2) of the Act [Porter v Don the Beachcomber (1966), 48 CPR 280 (Ex Ct)].

[7]  In response to the Registrar’s notice, the Owner furnished the affidavit of Rodrigo Ortiz Totoricaguena, sworn on October 14, 2015 in Playa Del Carmen, Quintana Roo, Mexico. Both parties filed written representations and were represented at an oral hearing.

The Owner’s Evidence

[8]  In his affidavit, Mr. Totoricaguena identifies himself as the Resident Manager at Blue Diamond Riviera Maya. He states that he has held this position since 2011 and works for the Owner.

[9]  Mr. Totoricaguena states that the Owner is a global hotel management company that owns and operates “a variety of different hotel brands in several countries throughout the world”. He explains that each hotel is separately incorporated, but that together they are known as the “BlueBay Group”. He states that BlueBay Group consists of 52 hotels in 27 destinations in Europe, the Caribbean, the Middle East and North Africa. He confirms that BlueBay Group’s hotel brands include BLUE DIAMOND.

[10]  Mr. Totoricaguena specifies that there are two BLUE DIAMOND hotels in operation: the Blue Diamond Sahara Palace Marrakech in Marrakech, Morocco, and the Blue Diamond Riviera Maya in Riviera Maya, Mexico. He confirms that both hotels were operated throughout the relevant period.

[11]  With respect to the Blue Diamond Riviera Maya hotel, Mr. Totoricaguena explains that it is incorporated as Corporativo Almería S.A. de C.V. (Almería) and that the Owner licenses the use of the Mark to both BlueBay Group and Almería.  Mr. Totoricaguena confirms that, pursuant to the licence agreement with both licensees, the Owner “maintains control over the character and quality of the hotel services” provided.  Mr. Totoricaguena further attests that, as an “employee” of the Owner, and as the Resident Manager at the Blue Diamond Riviera Maya, he acts on the Owner’s behalf to “directly oversee the quality of the hotel services” provided by Almería.

[12]  With respect to use of the Mark in Canada, Mr. Totoricaguena attests that Canadians were made aware of the BLUE DIAMOND brand through advertising distributed in Canada and through hotel services provided by the Blue Diamond Riviera Maya during the relevant period.

[13]  Specifically, Mr. Totoricaguena states that the Blue Diamond Riviera Maya is advertised to Canadians by the Owner’s licensees, in particular on the hotel’s own website and on BlueBay Group’s website. He states that advertising also originates from travel agencies in Canada—such as WestJet Vacations and Transat Holidays/Vacances Transat—who act as agents for BlueBay Group. Additionally, he states that the hotel is advertised through third party travel websites, such as www.slh.com, www.expedia.ca, www.hotels.com, and www.jetsetter.com.

[14]  Attached as Exhibit B to Mr. Totoricaguena’s affidavit are images of advertisements from WestJet and Transat, which Mr. Totoricaguena attests are representative examples of advertisements distributed in Canada during the relevant period. The WestJet example appears to be a template; the Mark is displayed in the name “BLUE DIAMOND RIVIERA MAYA” and in a logo comprising the letters BD in a stylized diamond design above the words BLUE DIAMOND (the Blue Diamond Logo). In each of the two Transat examples, the Blue Diamond Logo is displayed above the much smaller words By BlueBay.

[15]  In addition, at Exhibit H, Mr. Totoricaguena provides screen captures from www.tripadvisor.es, as an example of how Canadians can also obtain information about the Blue Diamond Riviera Maya hotel through various third party travel websites. The exhibit combines excerpts of hotel reviews, written in English and French, by individuals stating that they are from Canada. Nine of the 15 reviews appear to be from the relevant period.  Mr. Totoricaguena attests that these reviews may also be viewed on tripadvisor.ca and confirms that they provide accurate information about the Blue Diamond Riviera Maya.

[16]  Mr. Totoricaguena further attests that “various hotel services” are provided in Canada in association with the Mark, “including hotel booking services, meeting and event planning services, and travel destination information services”. He also notes that Canadians receive “additional hotel services” when they actually stay at a BLUE DIAMOND hotel.

[17]  In this respect, Mr. Totoricaguena attests that Canadians can access the Blue Diamond Riviera Maya’s website, operated by Almería at www.bluediamond-rivieramaya.com, and the BlueBay Group’s webpages for the hotel, at www.bluebayresorts.com. Attached as Exhibits C and D to his affidavit are screenshots from these websites, which he attests are representative of how the sites “would have looked during the Relevant Period”.  Mr. Totoricaguena asserts that the exhibited screenshots demonstrate how Canadians are provided hotel booking services; meeting and event planning services; information about the hotel’s amenities, services and activities; and travel information, including information about Riviera Maya.

[18]  I note that two sets of screenshots are included in Exhibit C. The first set shows basic information on the hotel’s location, amenities, services and activities. The Blue Diamond Logo is displayed at the top of the webpage and an online booking form is presented on the right. The second set of screenshots is an article describing things to do in Riviera Maya; again, the Blue Diamond Logo is displayed at the top of the page.

[19]  The screenshots at Exhibit D provide similar information, as well as links for booking by e-mail and by Skype, and other booking information. I note that telephone numbers are provided for booking from various countries; Canada is not among them. The Mark is displayed in various locations, for example, in the heading BLUE DIAMOND RIVIERA MAYA and in the footer’s list of hotel brands. As noted by Mr. Totoricaguena, one of the screenshots lists guest reviews of the hotel. Two of the reviewers indicate that they are from Canada, although their reviews are dated after the relevant period.

Hotel booking services

[20]  With respect to hotel booking services in particular, Mr. Totoricaguena attests that Canadians “can and do access” such services from Canada, to “view prices and availabilities, view room types, make reservations and make payments for stays at the BLUE DIAMOND Riviera Maya”. He specifies that such services are provided to Canadians directly by the hotel, including by telephone and through the hotel’s website, and are also provided through BlueBay Group’s website.

[21]  Mr. Totoricaguena states that booking services are also provided to Canadians through the third party travel websites that act as agents for BlueBay Group. To illustrate, he attaches as Exhibit G to his affidavit screenshots from the websites www.slh.com, www.expedia.ca, www.hotels.com, and www.jetsetter.com.  Mr. Totoricaguena attests that, to the best of his knowledge, these websites were “available to receive bookings from Canadians” during the relevant period. As depicted in the screenshots, the websites provide information about the “BLUE DIAMOND RIVIERA MAYA” hotel and its location, links to customer reviews, and either “check availability” or booking functions.

[22]  Mr. Totoricaguena confirms that several Canadians were guests at the Blue Diamond Riviera Maya during the relevant period, as determined from the address or identification each guest provided to the hotel upon check-in. In support, Mr. Totoricaguena attaches as Exhibit E to his affidavit a chart created using the Owner’s corporate records, showing “various information pertaining to 18 representative example reservations made by Canadians during the Relevant Period”. Additionally, attached as Exhibits F.1 and F.2 are partially redacted copies of documents for two of the Canadian reservations listed in Exhibit E. The documents include invoices from Almería, e-mailed booking confirmations and a guest registration form, all dated during the relevant period and displaying the Mark.

Meeting and event planning services

[23]   Mr. Totoricaguena further asserts that the Mark is used in association with meeting and event planning services, including wedding planning services. He states that it “is common for Canadian couples to plan a ‘destination wedding’ in Mexico, and therefore, these wedding planning services are provided to Canadians while they are in Canada, in advance of their wedding”. In this respect, he specifies that couples are provided with “a wedding coordinator, who will be their contact at the hotel for all their wedding needs”. He further attests that, given “the large number of details typically associated with weddings, it is the normal course of trade for couples to correspond by email or phone with the wedding coordinator on a regular basis leading up to their wedding.” I note that Mr. Totoricaguena provides no specifics on the nature of these planning and coordination services; for example, he does not specify whether they extend beyond assistance with selecting the hotel’s wedding-related products and services.

[24]  Mr. Totoricaguena states that the Blue Diamond Riviera Maya advertises its wedding services on the BlueBay Group website. Attached as Exhibits I and J to his affidavit are screenshots and printouts from the website promoting three wedding packages. The screenshots display a sidebar titled WEDDINGS AT BLUE DIAMOND RIVIERA MAYA, which lists the services provided in each package, including “Wedding organization by a Wedding coordinator”, as well as other services, such as “In-room champagne check-in”, “Personal dressing assistant”, “Preparation and ironing of the wedding dress and groom’s tuxedo” and “Wedding menu tasting for the bride and groom”. The printouts contain similar information, and display the Blue Diamond Logo on the first page for each package.

[25]  Mr. Totoricaguena confirms that Canadians have been married at the Blue Diamond Riviera Maya and have accessed its wedding planning services while in Canada, including during the relevant period.

Travel destination information services

[26]  Mr. Totoricaguena also asserts that the Mark is used in association with the provision of travel destination information services. He states that such services are available on the Blue Diamond Riviera Maya hotel website and on the BlueBay Group website.

[27]  In this respect, he refers again to the webpages at Exhibits C and D, which provide directions to the hotel and describe sights and activities in Riviera Maya. I note that the webpages at Exhibit D also provide other information about the area, such as its climate and cuisine.  Mr. Totoricaguena attests that Canadians “can and do access the travel information services on [these two websites] from Canada, and contact the BLUE DIAMOND Riviera Maya directly by phone or email for the purpose of obtaining travel destination information”.

Analysis

[28]  At the outset, I note that the Owner conceded, in its written representations and at the hearing, that it is not seeking to maintain “restaurant services” in its registration. Indeed, there is no evidence before me of either restaurant services available in Canada or special circumstances excusing non-use of the Mark in association with such services.

[29]  On the other hand, the Owner submits that the evidence establishes use of the Mark in Canada during the relevant period in the advertisement and performance of “hotel services”. Specifically, the Owner asserts use of the Mark in association with hotel room booking services; hotel meeting and event planning services, such as wedding planning services; and travel destination information services, such as providing directions to the hotel and information about the surrounding area and local attractions.

[30]  The Owner submits that, although the “hotel services” provided under the Mark in Canada differ from those provided in Mexico, Canadian residents nevertheless received targeted advertising and the benefit of “hotel services” in connection with the Mark in Canada during the relevant period.

[31]  The Requesting Party challenges the Owner’s evidence and submissions in this regard mainly on four grounds:

1. Mr. Totoricaguena does not specify his title or responsibilities with the Owner, such that his evidence is hearsay and should accordingly be disregarded.
2. Any use of the name BLUE DIAMOND RIVIERA MAYA or of the Blue Diamond Logo does not constitute use of the Mark as registered.
3. There is no evidence that use of the Mark is by the Owner or enures to the Owner’s benefit.
4. The Owner’s activities in Canada do not constitute “hotel services”.

[32]  I will address each of these arguments in turn.

Admissibility of evidence

[33]  The Requesting Party argues that Mr. Totoricaguena does not specify his title or responsibilities with the Owner, such that his evidence constitutes hearsay and should be “ignored” in its entirety or “given no weight”. At the oral hearing, the Requesting Party emphasized that evidence in section 45 proceedings is to be furnished by or on behalf of the registered owner. On this basis, the Requesting Party submitted that it is important to know the affiant’s position with the registered owner; knowing his or her role within a subsidiary company is insufficient.

[34]  However, I accept that Mr. Totoricaguena’s position—as the resident manager of a hotel owned and operated by the Owner—is sufficient to establish his personal knowledge of the facts set out in his affidavit. Notwithstanding the hotel’s incorporation, Mr. Totoricaguena attests that he is “an employee” of and “[w]orks for” the Owner, acting on its behalf. There is no indication that the hotel’s incorporation in this case would affect Mr. Totoricaguena’s ability to speak on the Owner’s behalf or otherwise affect the weight of his evidence.

Use of the Mark as registered

[35]  At the oral hearing, the Requesting Party briefly submitted that use of BLUE DIAMOND RIVIERA MAYA or the Blue Diamond Logo does not constitute use of the Mark as registered.

[36]  The Owner, for its part, submitted that the average consumer seeing BLUE DIAMOND RIVIERA MAYA or the Blue Diamond Logo would perceive the Mark on its own. In this respect, the Owner suggested that the average consumer of hotel services would understand that RIVIERA MAYA simply refers to the hotel’s location.

[37]  Generally, use of a word mark in combination with additional words or design elements qualifies as use of the word mark if the public, as a matter of first impression, would perceive the word mark per se as being used. [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)]. In this case, I agree with the Owner that RIVIERA MAYA would be perceived as descriptive text following the Mark per se. Furthermore, by virtue of its size and position, the Mark stands out from the surrounding word and design elements in the Blue Diamond Logo.

[38]  Accordingly, in applying the principles set out by the Federal Court of Appeal in Canada (Registrar of Trade Marks) v Cie International pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA) and Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA), I find that the dominant feature of the Mark as registered—the words BLUE DIAMOND—is maintained in both BLUE DIAMOND RIVIERA MAYA and the Blue Diamond Logo. The Mark retains its identity and remains recognizable.

Use by the Owner

[39]  The Requesting Party further submits that any use of the Mark in evidence is not by the Owner and does not enure to the Owner’s benefit.

[40]  In this respect, pursuant to section 50(1) of the Act, for Almería’s or BlueBay Group’s use of the Mark to enure to the Owner’s benefit, the Owner must maintain “direct or indirect control of the character or quality” of the services performed in association with the Mark under licence.

[41]  As stated by the Federal Court, there are three main methods by which a trade-mark owner can demonstrate the requisite control: first, by clearly attesting to the fact that it exerts the requisite control; second, by providing evidence demonstrating that it exerts the requisite control; or third, by providing a copy of a licence agreement that provides for the requisite control [per Empresa Cubana del Tabaco v Shapiro Cohen, 2011 FC 102, 91 CPR (4th) 248]. Evidence of control by the owner of a registered trade-mark can in turn support the finding of a licence agreement [Wells’ Dairy Inc v UL Canada Inc (2000), 7 CPR (4th) 77 (FCTD)].

[42]  The Requesting Party submits that the Owner fails to demonstrate the requisite control by any of the three methods set out in Empresa.

[43]  First, in its written representations, the Requesting Party submits that the Owner’s evidence is “vague as to the nature of an alleged licence purportedly granted by [the Owner] to the 52 companies that comprise the ‘BlueBay Group’, including [Almería]”. In this respect, the Requesting Party submits that a licence cannot be granted to “a trading name for numerous distinct legal entities”.

[44]  Second, the Requesting Party characterizes Mr. Totoricaguena’s assertions as a “mere bald allegation of a license” and as a bald statement that control is maintained, without any supporting evidence or particulars on how the requisite degree of control is exercised. At the oral hearing, the Requesting Party elaborated that, although the requirements of section 50 may be met by an assertion of control, some indication of the Owner’s standards and control methods remains necessary, to establish that the control exercised was the requisite control, that is to say, control meeting the requirements of the licence agreement and of section 50 in general.

[45]  With respect to the licence to “BlueBay Group”, although I agree that Mr. Totoricaguena’s statements in this regard are somewhat vague, I am prepared to accept them as evidence that the Owner granted a licence to the specific legal entity or entities within BlueBay Group that operate the Blue Diamond Riviera Maya’s webpages at www.bluebayresorts.com, and otherwise provide booking, event planning and travel information services for the Blue Diamond Riviera Maya hotel.

[46]   With respect to the requisite control, section 50 requires the registered owner to have “…under the licence, direct or indirect control of the character or quality of the goods or services”. The Requesting Party provides no authority for the proposition that the “requisite” control discussed in Empresa refers to any additional requirements or that a certain “degree” of control must be established. Accordingly, I accept Mr. Totoricaguena’s statement that the Owner, pursuant to its licence agreement with Almería and BlueBay Group, “maintains control over the character and quality of the hotel services” as an attestation of the “requisite” control.

[47]  I also accept Mr. Totoricaguena’s stated oversight of the quality of Almería’s hotel services as evidence that the Owner exerts the requisite control, at least with respect to the licensee Almería. In this respect, I accept that Mr. Totoricaguena is employed by the Owner to manage the Blue Diamond Riviera Maya hotel on the Owner’s behalf.

[48]  Accordingly, I accept that the Owner has established compliance with section 50 of the Act, such that use of the Mark by Almería and BlueBay Group enures to the Owner’s benefit.

Use in Canada

[49]  The main issue in this case concerns use of the Mark in Canada. In this respect, the Owner concedes that neither of its BLUE DIAMOND hotels was physically located in Canada during the relevant period.

[50]  Nevertheless, the Owner submits that it used the Mark in Canada in the advertisement and performance of “hotel services”, namely, hotel booking services; hotel meeting and event planning services; and travel destination information services. The issue, then, is whether the Owner’s activities in this regard constitute performance of the registered service “hotel services” in Canada.

[51]  In this respect, the parties differ on how to assess whether a given activity constitutes a “hotel service” in the absence of a physical hotel in Canada.

[52]  I note at the outset that, in addition to their submissions outlined below, both parties also approached the issue from a policy perspective. For example, submissions were made on how services should be interpreted and where thresholds of use should be set so as to protect trade-mark registrants, particularly in light of Canada’s accession to the Madrid Protocol and related legislative amendments. However, the deliberation of such policy questions is beyond the scope of a section 45 proceeding.

Requesting Party’s position

[53]  The Requesting Party submits that performance of “hotel services” in Canada requires a physical hotel in Canada.

[54]  At the oral hearing, the Requesting Party characterized the foundation of a hotel as a place that provides lodging. Accordingly, in the Requesting Party’s submission, if the “core benefit” of lodging is not available in Canada, then “hotel services” are not available in Canada, regardless of the ability to book rooms from Canada or the availability of any other benefits.

[55]  In this respect, the Requesting Party adopts the Registrar’s reasoning in Stikeman Elliott LLP v Millennium & Copthorne International Ltd, 2015 TMOB 231, 2015 CarswellNat 10512 (Millennium2015), where the Registrar considered services connected with a hotel in Singapore:

Maintaining the registration with respect to “hotel services” in this case would give the Owner an overly broad scope of protection over services that it does not actually perform in Canada. Where a trade-mark owner performs services in another jurisdiction and wishes to obtain and maintain a registration in Canada in association with the same trade-mark and same services, it should generally mirror the performance of those services in Canada; merely casting the shadow of those services is insufficient. [at para 45]

[56]  Furthermore, the Requesting Party argues that the only evidence of the Mark’s display in connection with meeting or event planning services consists of advertisements listing features and costing for wedding packages. In this respect, the Requesting Party submits that the Owner has conflated promotion of a service and its actual performance, and that, in any event, planning services do not constitute “hotel services”.

[57]  Similarly, the Requesting Party submits that providing directions to a hotel in Mexico and lists of nearby tourist destinations is tantamount to hotel promotion and does not constitute a “stand-alone hotel service”. In this respect, at the oral hearing, the Requesting Party observed that it is common for organizations to have websites and that such websites will naturally provide information relating to the organization’s services. The Requesting Party submits, however, that offering such a website does not, in itself, constitute performance of the organization’s services.

[58]  In support of its position, the Requesting Party largely relies on two recent decisions rendered under section 45 of the Act: Maillis v Mirage Resorts Inc, 2012 TMOB 220, 107 CPR (4th) 298 (Bellagio) and Fetherstonhaugh & Co v Supershuttle International, Inc, 2014 TMOB 155, 128 CPR (4th) 469, aff’d 2015 FC 1259, 2015 CarswellNat 8336.

[59]  In Bellagio, the registered owner’s Las Vegas hotel was advertised on the owner’s website, on websites operated by third party travel service providers, and in travel catalogues distributed in Canada. Canadians were able to make reservations at the hotel through its website and toll free telephone numbers and stayed at the hotel during the relevant period. However, the Registrar held that “it is contrary to common sense to equate the ability to make hotel reservations with the operation of a hotel” [at para 17]. The Registrar favourably cited Motel 6 Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD), where the Federal Court held that “receiving and confirming reservations for motel accommodation in the U.S.A. does not constitute use of the mark in Canada in association with motel services” [Motel 6 at para 42]. Accordingly, the Registrar deleted “hotels” from the registration at issue, despite maintaining “promotional and guest relations services namely hotel and casino reservation and booking services”.

[60]  Supershuttle concerned a registration for “airport passenger ground transportation services”. The registered owner’s airport shuttles did not run in Canada, although they were advertised in and could be booked from Canada. In deciding that the registered service was not performed in Canada, the Registrar referenced the Federal Court’s decision in Marineland Inc v Marine Wonderland & Animal Park Ltd (1974), 16 CPR (2d) 97 (FCTD), to the effect that, “where performance of services offered by a trade-mark owner, by necessity, could only be completed by travelling abroad, the sale of admission vouchers in Canada could not be considered performance of services in Canada” [Supershuttle at para 14]. The Registrar’s decision in Supershuttle was upheld by the Federal Court.

[61]  In both Bellagio and Supershuttle, the Registrar distinguished the Federal Court’s decision in Heenan Blaikie LLP v Sports Authority Michigan Inc, 2011 FC 273, 91 CPR (4th) 324 (TSA), which essentially held that “retail store services” and “operation of retail stores” could be performed through a website, without a physical presence in Canada. In this respect, in both Bellagio and Supershuttle, the Registrar held that hotel services and ground transportation services are not analogous to retail store services. Specifically, technology allows an individual to shop at retail stores from home, whereas hotels and airport shuttles “cannot be operated via the Internet or a 1­800 telephone number” [Bellagio at para 17; Supershuttle at para 28].

[62]  At the oral hearing, the Requesting Party also relied on the Registrar’s recent decisions in Millennium2015 and Stikeman Elliott LLP v Millennium & Copthorne International Ltd, 2017 TMOB 34, 148 CPR (4th) 283 (Millennium2017). In these cases, the registrations at issue were maintained for hotel “reservation services”, but not “hotel services”. The Registrar followed a similar approach to the one taken in Bellagio, and furthermore held that meeting and event planning services are not “hotel services”. In this respect, the Registrar noted the Federal Court’s observation in Plough that “[t]here is no room for a dog in the manger attitude on the part of registered owners who may wish to hold on to a registration notwithstanding that the trade mark is … not in use with respect to some of the wares in respect of which the mark is registered” [Plough at para 10].

[63]  At the oral hearing, the Requesting Party also cited the Registrar’s recent decision in Miller Thomson LLP v Hilton Worldwide Holding LLP, 2017 TMOB 19, 2017 CarswellNat 386, expunging a registration for “hotel services”, despite the availability of reservation, booking, “payment” and loyalty program services in Canada. In this respect, the Registrar was not persuaded to draw a distinction between “hotel services” and services described as “hotels” or “operation of a hotel”. While acknowledging that “academically and linguistically speaking ‘hotel services’ could be interpreted more broadly”, the Registrar stated that goods and services should be interpreted “in ordinary commercial terms” [at para 53]. The Registrar referred to the exercise as “a purposive interpretation, not an academic one.” Applying this principle, the Registrar held that, “[i]f someone says they offer ‘hotel services’ in Canada, the average consumer is expecting a hotel” [at para 55].

[64]   In sum, the Requesting Party argues that there is no meaningful distinction between the service “hotels” and “hotel services”. The Requesting Party rejects Mr. Totoricaguena’s characterization of various booking, planning and information services as “hotel services”, and argues that that is not the generally recognized meaning of “hotel services” in the trade. In the Requesting Party’s submission, the Owner operates a hotel under the Mark, and the Owner’s services are only characterized as “hotel services” because the Owner operates a hotel. Without the hotel for lodging—as is the situation in Canada—the services are not “hotel” services; they are just “other services”.

Owner’s position

[65]  In its written representations, the Owner submits that it can be difficult to fully reconcile the jurisprudence on “how and when services are provided in Canada when the core business is outside Canada”, but that, nevertheless, the following “clear test” emerges:

Applying a broad and common sense reading of the service as described in the registration, is there evidence that the mark was advertised/displayed in Canada and that the service as described was available/provided in Canada, keeping in mind the rule that the same service cannot be used to support multiple descriptions in a registration [Owner’s representations at para 26, emphasis in original].

[66]  The Owner submits that this suggested approach is consistent with the Act, the summary nature of section 45 proceedings—being a simple tool to clear “deadwood” from the Register—and the “established principle that registrations should be maintained if there is doubt”.

[67]  More particularly, the Owner submits that services should be read as broadly as is reasonable and that “common sense must be applied to promote certainty and avoid absurd results”.

[68]  In this respect, the Owner refers to the Goods and Services Manual, published by the Canadian Intellectual Property Office as a representative listing of acceptable terms for identifying goods and services (the Manual). The Owner notes that, when it applied to register the Mark in April 2011, the only relevant Manual entry was “hotel services”. Separate entries for “hotel accommodation services”, “hotel room booking services”, “hotel reservations” and the like were added later. The Owner concludes from this timing that the original “hotel services” is a broad description that encompassed, and continues to encompass, the subsequent, narrower descriptions. The Owner submits that such narrower descriptions are not intended to replace use of a broad “hotel services”, but to address services provided in different contexts, for example, by travel agents.

[69]  Additionally, the Owner refers to the Registrar’s practice for the examination of trade-mark applications. In the Owner’s submission, booking, event planning, and travel information services may be considered to fall within the ambit of “hotel services” at the Examination stage and, therefore, excluding such services from the definition of “hotel services” in a section 45 proceeding would “catch owners by surprise”. The Owner submits that its registration should be treated in the same way as a registration for, say, “hotel services, namely hotel booking” or “hotel services, including hotel booking”.

[70]  Ultimately, the Owner submits that a narrow interpretation of “hotel services” solely as “hotel accommodation services” would “put in doubt hundreds of registrations obtained for ‘hotel services’ on the basis of the Manual and the understanding that further specification of the range of services provided was optional”. The Owner further submits that it “is entitled to the benefit of the description that it chose, as supported by the Manual, as approved by the Trademarks Office, and as understood by consumers.”

[71]  The Owner further submits that such a narrow interpretation of “hotel services” would be inappropriate in light of the “rule that the same service cannot be used to support multiple descriptions in a registration”. In this respect, the Owner cites the Federal Court’s decision in Sharp Kabushiki Kaisha v 88766 Canada Inc (1997), 72 CPR (3d) 195 (FCTD), which dealt with a registration that covered both “watches and clocks” and “talking clocks”. Use of the trade-mark at issue had been shown in association with talking clocks, and there appeared to be some question as to whether such devices were “watches” or “clocks”. However, the Court held that this question was irrelevant, because the devices had been separately designated as “talking clocks” in the registration. On this basis, the Court maintained the registration for “talking clocks”, but deleted both “watches” and “clocks”.

[72]  The Owner states, “it is because of Sharp that applicants prefer (and counsel recommend) ‘hotel services’ in a description rather than the more specific descriptions ‘hotel accommodation services’, ‘hotel booking services’, ‘hotel meeting services’, etc., separately.” In the Owner’s submission, if any of these specific descriptions were to be added to “hotel services” in a registration, they would effectively “narrow the scope of ‘hotel services’ in accordance with the principles of Sharp”.

[73]  As noted above, the Owner also invokes the principle that any doubt with respect to the evidence should be resolved in favour of the registrant [per Bereskin & Parr v Fairweather Ltd, 2006 FC 1248, 58 CPR (4th) 50]. In this respect, the Owner distinguishes resolving doubt from resolving ambiguities or inconsistencies in affidavits. The Owner does not dispute the established practice of resolving deliberately vague or inconsistent statements in an affidavit against the interests of the party submitting the document [per Aerosol Fillers Inc v Plough (Canada) Ltd (1979), 45 CPR (2d) 194 (FCTD)]. Rather, the Owner emphasizes the summary nature of a section 45 proceeding and the serious consequences of expunging established trade-mark rights and, in this light, submits that it need only meet the relatively light burden of making out a prima facie case [citing BCF SENCRL v Spirits International BV, 2012 FCA 131, 101 CPR (4th) 413].

[74]  With respect to the jurisprudence on which the Requesting Party relies for the proposition that a physical hotel in Canada is required to maintain a registration for “hotel services”, the Owner submits that those cases are distinguishable.

[75]  The Owner distinguishes Bellagio on two bases. First, the Owner contends that, although it is “common sense” to require operation of a hotel in Canada for the service “hotels”, the same conclusion “cannot be blindly applied” to “hotel services”. Second, the Owner applies the approach suggested by Sharp and submits that, because “hotels” and “hotel … reservation and booking services” were listed separately in the registration at issue in Bellagio, the description “hotels” could never have encompassed “hotel…reservation and booking services” in that particular registration. On this basis, the Owner characterizes the Registrar’s findings on the scope of the service “hotels” in Bellagio as being obiter and, as such, of no persuasive value.

[76]  The Owner distinguishes Supershuttle on the basis of the services at issue in that case, namely “airport passenger ground transportation services”. The Owner submits that consumers would expect those services to include ground transport, given the limited range of services provided by ground transporters. In contrast, the Owner argues, a greater variety of services is expected from hotels, including services that do not necessarily involve a hotel stay, such as conference services and the like.

[77]  At the hearing, the Owner also distinguished the Millennium cases, particularly on the basis of the evidence presented. The Owner submits that, in the Millennium cases, the Registrar lacked evidence that the registered owner had agents acting for it in Canada or of how it otherwise provided customers with a benefit that could be enjoyed in Canada. In contrast, the Owner points to its own evidence of targeted advertising and services available in Canada, particularly through Canadian travel agents.

[78]  With respect to Hilton, although the Registrar’s decision followed the same reasoning as in Bellagio and the Millenium cases, the Owner urges the Registrar to take a different approach in the present case. The Owner emphasizes that the Registrar is not bound by its earlier decisions—their value as practice guidance and the principle of comity notwithstanding. In addition, as an indication that “hotel services” is interpreted broadly in other jurisdictions, the Owner notes a reference in Hilton to an Australian decision from 2013 where, allegedly, on similar facts to those in Hilton, a registration for “hotel services” was maintained.

[79]  Ultimately, the Owner urges the Registrar to consider favourably two other “leading cases”: Société Nationale des Chemins de Fer Français SNCF v Venice Simplon-Orient-Express (1995), 64 CPR (3d) 87 (TMOB), aff’d (2000), 9 CPR (4th) 443 (FCTD) [Orient Express]; and Heenan Blaikie LLP v Sports Authority Michigan Inc, 2011 FC 273, 91 CPR (4th) 324 [TSA].

[80]  The Owner cites Orient Express and TSA, as well as Kraft Ltd v Registrar of Trade-marks, [1984] 2 FC 874, 1 CPR (3d) 457, in support of its position that services are to be interpreted without regard to whether they are “ancillary or incidental to the main business”. While conceding that an activity such as acceptance of hotel bookings might not support a registration for merely related services, such as “hotel accommodation services”, the Owner submits that acceptance of bookings can suffice to support a registration for a broader category of services that encompasses booking. In particular, the Owner submits that “hotel services” encompasses booking, accommodation, and other related services, and that this broader meaning of “hotel services” is the recognized meaning in the industry. The Owner underscores that Mr. Totoricaguena—a hotel manager—refers to booking, event planning and travel information services as “hotel services”; the Owner presents such statements as evidence that the industry understands these specific services to be “hotel services”.

[81]  In Orient Express, providing train reservation and ticketing services to Canadians through Canadian travel agencies was held sufficient to maintain a registration for “travel services, namely railway passenger service”, despite the owner not operating a rail line in Canada. The Owner cites the following passage from the Registrar’s decision:

…the expression “railway passenger service” even in the singular, stands on its own and could include more than the operation of a train. The expression, in my view, conveys several ideas and I can see no reason why such an expression should be given a restrictive interpretation [TMOB at para 10].

[82]  The Owner notes that the Federal Court—which upheld the Registrar’s decision on appeal—likened the circumstances of the case to those in Saks & Co v Registrar of Trade-marks (1989), 24 CPR (3d) 49 (FCTD), where a registration for “retail department store services” was upheld, on the basis that customers could receive mail and telephone order services without leaving Canada. The Court in Orient Express was of the view that “the words ‘travel services, namely passenger rail services’ should not be given any more limited scope” [FCTD at para 10].

[83]  Additionally, the Owner emphasizes the involvement of Canadian travel agencies as an important factor leading to the maintenance of the registration in Orient Express.

[84]  Finally, in TSA, the Federal Court found that providing information over the Internet about one’s merchandise can support a registration for “retail store services” in the absence of a physical store in Canada. The Owner submits that TSA carries particular weight, because it was decided de novo. Accordingly, the Court provided its own opinion and direct guidance on how, in a section 45 proceeding, performance of the registered services is to be interpreted broadly, including when the core business is not physically located in Canada. The Owner contrasts TSA with other cases, such as Supershuttle, where the Court merely reviewed the Registrar’s decision on a reasonableness standard, without commenting on whether it was “correct”.

Conclusion

[85]  Although not cited by either party, I find pertinent the Federal Court’s comments in UNICAST SA v South Asian Broadcasting Corp, 2014 FC 295, 122 CPR (4th) 409, to the effect that there is “an important distinction between services performed in Canada and services performed outside Canada, perhaps for Canadians” [at para 46].

[86]  In UNICAST, a Swiss radio broadcaster applied to expunge a registration for the trade-mark RED FM under section 57 of the Act. The Swiss applicant claimed to provide radio broadcasting services to Canadians through its website, in association with an earlier, confusingly similar trade-mark. The Court commented as follows:

[47] … should we follow the Applicant’s point of view, any foreign trade-mark holder could request and obtain the expungement of a bona fide Canadian trade-mark based on previous use through the Web even if this foreign trade-mark owner had basically nothing to do with Canada and no physical presence in the country…. Should Canadian companies be expected to protect themselves from every company around the world which has a website that is accessible in Canada? Could this even be possible to achieve? It would be illogical and impossible to take this approach.

[48] What is more, the Respondent quite rightly submits that this situation would be unthinkable should the roles in these proceedings be reversed. Would a Canadian trade-mark owner have the right to request from a foreign trade-mark owner that they stop using their trade-mark if this foreign owner’s presence in Canada is limited to the Internet? In particular, should this Court uphold the RED FM trade-mark as valid, could the Respondent then request from the Applicant that it stops streaming its programming online because one of the listeners could potentially be Canadian? Again, this suggestion is preposterous. The notion of performing the services is essential.

[87]  In determining whether the Swiss company’s “broadcast undertaking” was “carried on in whole or in part within Canada”, the Court considered a number of criteria, including whether the company actively targeted Canadian audiences in its programming, for example, by taking steps towards gathering Canadian listeners, other than streaming its programming online. The Court also drew a distinction between “radio broadcasting” and “transmission of sound, information and messages through computers to Canadians”; while the Swiss company’s services in Canada did not constitute “radio broadcasting”, they could constitute “transmission of sound, information and messages”.

[88]  Although UNICAST dealt with services of a different nature, I consider the Court’s distinction between services performed in Canada and services performed outside Canada but accessible to Canadians to be relevant to the present case. Indeed, the same considerations were recently applied by the Registrar in 2900319 Canada Inc v Dollar General Corp, 2017 TMOB 46, a section 45 proceeding dealing with a registration for “retail variety store services” in the absence of a physical store in Canada. The decision in UNICAST was also cited by the Federal Court in Supershuttle, for the proposition that, although “the observation of a trademark by individuals on computers in Canada may demonstrate use of a mark, the registered services must still be offered in Canada” [Supershuttle at para 40; see also Millennium2015 at para 27 and Millenium2017 at para 33].

[89]  In applying these considerations to the present case, I am mindful of the fact that “use of a trade-mark in relation with a service must be decided on a case-by-case basis” [Express File Inc v HRB Royalty Inc, 2005 FC 542, 39 CPR (4th) 59 at para 23]. Accordingly, I find the general principles expressed in prior cases involving businesses outside Canada to be of greater assistance than the specific manner in which those principles were applied to the facts of each case, particularly in the cases not involving hotels.

[90]  Additionally, I do not find the Goods and Services Manual to be of particular assistance. Indeed, I agree with the Requesting Party that any conclusions drawn from the presence or timing of different entries in the Manual would be speculative. In the absence of explanatory notes, the Manual provides examples of how goods and services may be defined in acceptably specific ordinary commercial terms, but does not provide guidance on appropriate terms to choose for particular situations.

[91]  Furthermore, as the Mark is registered for only one relevant service—“hotel services”—I find it unnecessary to consider whether it would be appropriate to apply the approach taken in Sharp to the type of services at issue here, bearing in mind that, in certain cases, statements of services may contain “overlapping and redundant terms in the sense that the performance of one service would necessarily imply the performance of another” [as expressed in Gowling Lafleur Henderson LLP v Key Publishers Co, 2010 TMOB 7, 2010 CarswellNat 579 at para 15]. I would only note that, to the extent that prior cases involving hotels outside Canada may provide some guidance, the Sharp approach was not referenced in any of the hotel cases cited by the parties.

[92]  By the same token, as the registered services are not “hotel services, namely hotel booking” or “hotel services, including hotel booking”, it is unnecessary to determine whether it would be appropriate to maintain such a statement of services on the facts of the present case. In this respect, words that provide additional context might have implications on how a service is understood. In any event, when interpreting a statement of goods and services in a section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] language used” [see Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654, 51 CPR (4th) 434 at para 17].

[93]  On balance, upon considering the parties’ representations, on a common sense reading and with the Federal Court’s comments from UNICAST in mind, I find it difficult to conclude that the Owner in the present case performed “hotel services” in Canada.

[94]  Specifically, I am not satisfied that being able to access the information and functionality of a hotel website to learn about a hotel in Mexico and book a stay in Mexico translates into performance of “hotel services” in Canada. Similarly, I am not satisfied that contacting hotel staff located in Mexico to book a stay or make arrangements for an event in Mexico equates with performance of “hotel services” in Canada.

[95]  With respect to the presence of travel agents in Canada, even if I accept that they act on the Owner’s behalf, actively targeting and taking steps to gather Canadian clients, the services they provide in Canada are not in the nature of “hotel services”, but rather, booking and information services.

[96]  In this respect, although I agree with the Owner that services are to be given a “broad and common sense reading”, the jurisprudence acknowledges that interpreting services broadly has its limits. Notably, in Boutique Limité Inc v Limco Investments, Inc (1998), 84 CPR (3d) 164, the Federal Court of Appeal considered merely offering refunds or extending credit to Canadians for purchases made in the United States to be insufficient to justify a registration for “retail women’s clothing store services” in Canada. This conclusion indicates that there is a distinction to be drawn between the actual performance of a service and financial transactions relating to payment for the service.

[97]  Accordingly, in my view, offering Canadians the ability to select and pay for hotel services, whether online, by telephone, by e-mail or through travel agents, does not constitute performance of the hotel services themselves. To hold otherwise would conflate requesting and paying for a service with receiving the performance or benefit of that service. In this case, the benefit of the booked service is not enjoyed until the prospective guest actually arrives and claims the service at the hotel. As the purchaser has to leave Canada in order to enjoy that benefit, the booked service cannot be said to be performed in Canada.

[98]  Although the ability to book a hotel’s services in advance or to book them tentatively—to ensure their availability at a given point in time—may provide a benefit in itself, such a benefit is in being able to reserve hotel services, not in receiving actual hotel services per se. I am therefore of the view that this benefit corresponds, at best, to a “reservation” or “booking” service, not a “hotel service”.

[99]  Furthermore, much of the information provided to Canadians online or through discussions with travel agents and hotel staff would appear to consist of promotional content, such as information about the hotel’s services, its location, and features of the surrounding area that might make it an attractive destination for tourists and wedding parties. I agree with the Requesting Party that characterizing the provision of such information as a “hotel service” conflates the advertising and promotion of services with their actual performance.

[100]  Moreover, to the extent that the Blue Diamond Riviera Maya’s “wedding coordinator” provides some planning services beyond explaining and assisting with the selection of wedding packages and related options, I would not consider planning a wedding to be a service ordinarily described by the words “hotel services”. Likewise, to the extent that the Owner provides travel information that is not promotional in nature, I am of the view that providing travel information over the Internet per se would not ordinarily be described as providing “hotel services”.

[101]  In reaching this conclusion, I consider it unnecessary to determine whether information services constitute “hotel services” when they are provided to hotel guests at the concierge desk or otherwise during their stay. Similarly, it may well be that a hotel entering a guest’s name into its reservation system and physically holding a room for that guest constitutes a “hotel service”. The same might be said for making arrangements in connection with a destination wedding, business conference, or other event taking place in a hotel. However, in the case of the Blue Diamond Riviera Maya, such services are performed in Mexico. The services performed in Canada are not provided in a hotel, but rather, at best, on a computer, over the telephone, or at travel agencies.

[102]  In this respect, I agree with the Requesting Party that the services at issue would not ordinarily be considered “hotel services” unless they are delivered in a hotel setting. Indeed, common sense would suggest that companies who choose to describe their services as “hotel services”—rather than, for example, “wedding planning” or “travel arrangement”—do so because the services are tied to a hotel. Accordingly, when that hotel is located in Mexico, it stands to reason that the “hotel services” are performed in Mexico. Although some of the hotel’s activities might “reach” Canada, the benefits received in Canada are not in the nature of “hotel services”. Rather, the benefits received in Canada are, at most, in the nature of booking, information, or planning services.

[103]  In summary, given that the Owner’s services are not performed in a hotel environment in Canada, I find them insufficient to support a registration for “hotel services”.

[104]  In view of all of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered services within the meaning of sections 4(2) and 45 of the Act. Furthermore, the Owner furnished no evidence of special circumstances excusing the absence of such use.

Disposition

[105]  In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be expunged.

______________________________

Oksana Osadchuk

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2017-06-09

APPEARANCES

Daniel Anthony	FOR THE REGISTERED OWNER
Paul Tackaberry	FOR THE REQUESTING PARTY

AGENTS OF RECORD

Fetherstonhaugh & Co.	FOR THE REGISTERED OWNER
Ridout & Maybee LLP	FOR THE REQUESTING PARTY