Do you want to position yourself on the market using a name or a slogan referring to the quality of your products or services? Are you convinced you are the best and want to show it through a name or a slogan?
That's fine, but you should know that you cannot, in most cases, monopolize this name or slogan by registering it as a trademark, nor can you prevent anyone in your industry from using a similar name or slogan. If you claim to be the best, know that everyone else can claim to be the best too.
Indeed, the Trademarks Act does not authorize the registration of descriptive marks, i.e., those trademarks that describe the nature or quality of the products or services in association with which they are used. On this ground, words or slogans with a laudatory connotation are considered descriptive in that they describe the quality of the products and services as superior.
Thus, the words, EXCELLENT, QUALITY, BEST, PERFECT, SUPER, SUPERIOR, SUPREME or ULTRA, or any other word that praises the merits of the products or services will not be registrable as trademarks, unless they are combined with other words that would not describe the nature or quality of the products or services. The same applies to slogans that include such words since slogans are also trademarks.
However, an exception allows owners of laudatory trademarks to register their mark if it has been used for many years and has become distinctive. However, proof of acquired distinctiveness must be demonstrated through a formal declaration and supporting documents showing the extensive use of the trademark in a significant geographic area of Canada. For example, annual sales figures, annual advertising expenses, and examples of use of the trademark and its advertising over at least five years prior to the filing date of the trademark application will have to be provided as evidence.
This is how trademarks such as BEST OF THE BEST, from Best Western International, have been registered in Canada.
However, certain names or slogans may be considered highly suggestive and are, therefore, registrable. A fine line can sometimes be drawn between a suggestive or highly suggestive trademark, and one deemed descriptive of the nature or quality of the products and services in association with which it is used. Because rights may derive from the use of suggestive marks by third parties, whether or not they are registered, it is important not to overlook the availability search to be conducted before starting to use, and possibly register, a name or slogan referring to the quality of products or services.
The line that must not be crossed is sometimes as fine as the distinction between a suggestive and a descriptive trademark.
Our team of trademark specialists will be pleased to guide you through the process of verifying the availability of a trademark for use and registration and the protection strategy to be adopted for your trademarks in Canada and abroad.
Originally published November 10 2022
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.