On April 9, 2014, the Québec Superior Court issued its
decision in the matter of the interpretation of
Québec's Charter of the French language (the
"French Charter") and its interplay with trade-marks. The
Court confirmed that businesses can continue to use their
registered trade-marks on public signs outside their premises in
the Province of Québec without the need to add French
Christian Bolduc and
Jean-Sébastien Dupont of the Montreal office of Smart
& Biggar successfully represented the International Trademark
Association ("INTA") as an intervener in this
In Québec, the French Charter requires that public signs
and posters and commercial advertising be predominantly in French,
while providing for the Government to enact exceptions to that
general rule by way of regulations. In 1993, Québec
introduced an exception in the French Charter Regulation,
specifically allowing "recognized trade-marks" within the
meaning of the Trade-Marks Act to appear exclusively in a
language other than French.
For nearly two decades, the Office québécois
de la langue française ("OQLF"), the
governmental body in charge of applying and enforcing the French
Charter, allowed businesses to display their registered trade-marks
on public signs in a language other than French without the need to
add French generic language.
However, starting in 2010, the OQLF changed its position
(without any legislative change) such that any trade-mark appearing
on a public sign in Québec would be considered a trade name
use and different provisions of the French Charter and its
Regulation applied, requiring their translation into French or the
addition of French generic language.
In October 2012, several retailers (Best Buy, Costco, Gap, Old
Navy, Guess, Walmart, Toys "R" Us and Curves) filed a
motion for declaratory judgment in the Québec Superior Court
seeking to have the Court confirm the previous interpretation of
the trade-mark exception. INTA, a not-for-profit association
composed of trade-mark owners, trade-mark professionals and
academics from around the world, was granted leave to intervene in
this matter to raise important trade-mark law issues and
Mr. Justice Yergeau, in a thorough and well-reasoned decision,
rejected all the arguments put forward by the OQLF, represented by
the Attorney General of Québec. He held that the French
Charter and its Regulation could hardly be clearer and that there
was no doubt as to its proper interpretation.
Importantly for trade-mark owners doing business in
Québec, and as advocated by INTA in its intervention, the
Court noted a clear distinction among trade-marks, trade names
(under the Trade-marks Act) and "firm names" in
the French Charter, which the Judge equated with "raison
sociale" or corporate name. The Court concluded that
trade-marks are a distinct legal concept, which are clearly
different from trade names and corporate names and are governed by
their own set of rules.
On that basis, the Court rejected the OQLF's submission that
trade-marks displayed by retailers and other businesses on public
signs outside their premises are used as trade names or corporate
names, which would require the addition of French generic
Interestingly, the Court also noted that the French Charter and
its Regulation create a distinct niche for trade-marks.
The trade-mark exception to the requirement that public signs and
commercial advertising be predominantly in French, as well as other
related trade-mark exceptions provided for in the Regulation,
confirms that the Government chose to recognize a special status of
recognized trade-marks in the French Charter.
In conclusion, the Court refused to endorse the OQLF's
recent interpretation where the French Charter and its Regulation
are clear and have been supported by a consistent legislative
interpretation for two decades by the body in charge of applying
these provisions. It is for Québec's legislature to
intervene and decide whether legislative changes are necessary to
protect Québec's French language landscape against
trade-marks displayed in other languages, and particularly in
However, should Québec's newly-elected Government
decide to amend the French Charter, it will need to take into
consideration the inherent challenges associated with trade-mark
law, which is a subject-matter of Federal jurisdiction in Canada
and is also governed by various international treaties to which
Canada is a party.
The OQLF has until May 9, 2014 to appeal from that decision to
the Court of Appeal.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
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