In reasons released on April 9,
2014,1 Justice Yergeau of the
Superior Court of Québec held that the Québec
Charter of the French Language
(Charter) does not require that public
signs and commercial advertising containing a non-French trade-mark
be accompanied by a generic term in French, contrary to what was
recently being asserted by the Office québécois
de la langue française (OQLF), the regulator charged
with enforcement of the Charter.
Enacted in 1977, the Charter requires as a general rule
that public signs and commercial advertisements, as well as
"firm names," be in French.
Indeed, section 58 of the Charter provides that all
public signs, posters and commercial advertising must be in French
or in both French and another language provided that French is
markedly predominant. This section also enables the government to
establish exceptions to this general rule, which are set out in the
Regulation respecting the language of commerce and
One of these exceptions, in subsection 25(4) of the
Regulation, concerns recognized trade-marks for which no
French version has been registered. Under this section, such
trade-marks may appear exclusively in a language other than French
on public signs and posters and in commercial advertising.
A number of retailers have therefore been using their English
language trade-marks in their public signs and commercial
advertising in Québec for many years without objection from
However, in 2009, the OQLF decided to revisit its interpretation
of the applicable rules, invoking section 27 of the
Regulation, which provides that "an expression taken
from a language other than French may appear in a firm name to
specify it provided that the expression is used with a generic term
in the French language."
In 2011, several retailers received a notice from the OQLF
requiring that a generic term in the French language accompany
their trade-mark on their public signs, posters and commercial
advertising. In response, eight retailers petitioned the Superior
Court for a declaratory judgment confirming that their public signs
and advertising complied with the Charter and the
Regulation and that the addition of a generic term in the
French language was not required.
Before the Court, the Attorney General of Québec argued
that when a retailer is publicly displaying its trade-mark, it is
in fact displaying its name. Section 63 of the Charter
requires that the name of an enterprise be in French, and the only
exception to this requirement is section 27 of the
Regulation, which allows for a non-French expression to
appear in a firm name provided it is accompanied by a generic term
in the French language. Therefore, displaying the name of a
retailer on public signs or commercial advertising requires the
addition of a generic term in the French language if the name is
not French, even if it constitutes a recognized trade-mark.
The Court disagreed with the Attorney General, holding that the
name of an enterprise is a distinct legal concept from that of the
trade-mark used by an enterprise in its public signs and commercial
advertising. The Court concluded that section 27 of the
Regulation is not a rule of general application and does
not apply to the use of recognized trade-marks in public signs and
Businesses operating in Québec do not, therefore, have to
add a generic French term to their public signs and commercial
advertising when using a non-French recognized trade-mark, provided
that they have not registered a French version of said
1Magasins Best Buy Ltée
c Québec (PG) (April 9, 2014), Montreal,
500-17-074083-125 (Sup. Ct.).
2 CQLR c C-11, r 9.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
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.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).