A client contacts you, enthused about a new mark that you must protect forthwith. After the big reveal you groan inwardly—it’s another laudatory mark.
The English Court of Appeal dealt with laudatory marks over a century ago1:
“There are some words which are incapable of being [adapted to distinguish the goods of the proprietor from others’ goods] such as “good,” “best,” and “superfine.” They cannot have a secondary meaning as indicating only the goods of the [proprietor]...[A]n ordinary laudatory epithet ought to be open to all the world, and is not, in my opinion, capable of being registered [as a trademark].”
Trademark practitioners discourage adoption of laudatory or near-laudatory marks because their relatively low distinctiveness affords reduced protection and may provoke registrability or validity issues. Mark owners have nevertheless shown some preference for such marks. Consider for example these lists2 of the Top 20 word marks that have appeared in Canadian trademark applications:
The 17 June 2019 amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA) arguably raised the bar by imposing an inherent distinctiveness requirement on Canadian trademark applicants—see TMA Sections 32(1)(b) & 37(1)(d) and section 4.9 of CIPO’s Trademarks Examination Manual. One may accordingly wonder if some of the marks tabulated above will continue to dominate.
1 per Cozens-Hardy, M.R. in Re Joseph Crosfield & Sons Ltd. (1909), 26 R.P.C. 854 (the “Perfection” case)↩
2 These lists are based on queries of a data warehouse particularizing the 1,805,987 marks on the Canadian trademarks register as of 09-August-2021. 873,955 (48.4%) of those marks are currently active; the remaining 932,032 marks (51.6%) are inactive (i.e. abandoned, cancelled, expunged, withdrawn, etc.) as of 09-August-2021.↩
