On September 20, 2013, the International Trademark Association
("INTA"), a not-for-profit association of more than 5,900
members consisting of trade-mark owners, trade-mark professionals
and academics from more than 190 countries, was granted leave by
the Quebec Superior Court to intervene in a declaratory judgment
proceeding pertaining to the interplay between the Quebec's
Charter of the French language (the "French
Charter") and trade-marks. INTA is represented in this matter
by François Guay, Christian Bolduc and Jean-Sébastien Dupont of the Montreal
office of Smart & Biggar.
In Quebec, the French Charter requires that public signs and
commercial advertising be predominantly in French, while providing
an exception for "recognized trade-marks." Until
recently, the Office Québécois de la langue
française (OQLF), the body in charge of applying and
enforcing the French Charter, allowed businesses to use their
registered trade-marks, regardless of their language, on signs
outside their premises, consistent with the trade-mark
However, in 2011, the OQLF adopted a new policy (without any
legislative change) in which it specified that for storefront
signs, the law pertaining to trade names would now apply to
trade-marks, registered or not. In other words, any trade-mark
appearing on a public sign on a building would now be considered to
be a trade name use and the trade name rule requiring their
translation into French or the addition of French generic language
In October 2012, seven retailers (Best Buy, Costco, Gap, Old
Navy, Guess, Walmart and Toys "R" Us) joined forces and
filed a motion for declaratory judgment in the Quebec Superior
Court, arguing that the OQLF is misapplying the French Charter and
its Regulation by confusing trade name use with trade-mark use and
that its current position conflicts with previous policy
INTA, which advocates for the support and advancement of
trade-mark law around the world, sought leave to intervene in these
proceedings to raise important trade-mark law issues and policies.
In particular, it is INTA's position that the OQFL is blurring
the line between trade-marks and trade names and that forcing
trade-mark owners to add French generic language to their signs
puts their trade-mark rights at risk.
The case will be heard on the merits by the Quebec Superior
Court on October 21-23, 2013. INTA is represented in this matter by
François Guay, Christian Bolduc and Jean-Sébastien
Dupont of the Montreal office of Smart & Biggar.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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