On April 9, Mr. Justice Yergeau of the Superior Court of
Québec rendered a significant decision on the motion for
declaratory judgment instituted by eight multinational
corporations, namely, Best Buy, Costco, Gap, Old Navy,
Wal-Mart, Toys "R" Us, Guess? and Curves.
The motion was filed after the
Office québécois de la langue
française (the "Office") pressured these
companies and several others located in the province of
Québec, to add a descriptive term in French to their
trade-marks displayed in English-only on the signs posted in front
of their premises.
The Charter of the French
Language (the "Charter") provides that public signs
and posters in Québec must be displayed in French only or
also in French and another language, provided that the French text
appears as markedly predominant. An exception to this rule is found
in the Regulation respecting the language of commerce and
business (the "Regulation"), which provides that a
trade-mark may appear on a public sign exclusively in a language
other than French, unless a French version of the mark has been
registered with the Canadian Intellectual Property Office (the
"CIPO"). Section 25 of the Regulation is therefore
intended to allow an exception to the general rule.
For nearly two decades, the Office had
not required the addition of any French generic term to
English-only trade-marks displayed on the front of business
premises. Almost four years ago, the Office changed its
interpretation of the exception contained in the Regulation,
assimilating the use of a trade-mark on a sign outside business
premises as the use of the company's name. Under the Charter,
such an interpretation requires the addition of a descriptive term
in French where the company name is in a language other than
French. The judge did not accept the foregoing proposition, which
was put forth by the Attorney General, since doing so would have
the consequence of making company names synonymous with
trade-marks, whereas they are separate concepts in law.
In this regard, the evidence adduced
showed that the trade-marks of most of the petitioners did not
correspond to their company names. Consequently, the use of a
trade-mark on the front of business premises did not constitute the
display of the company name. The evidence indicated that serious
consideration had been given to the possibility of requiring the
addition of a generic term to non-French trade-marks before the
proposal was abandoned.
The judge held that the Charter and the
Regulation are clear in allowing a trade-mark to be displayed in a
language other than French, without the addition of a French
generic term, provided that no French version of the mark is
registered. This interpretation of the Charter and the Regulation
had been applied by the Office for years. The judge concluded that
only an amendment to the Regulation could make the addition of a
generic term to English-only trade-marks compulsory.
It is important to specify that this
judgment deals exclusively with the display of trade-marks duly
registered with the CIPO and does not apply to the display of
English-only trade-marks that are not registered.
It remains to be seen whether this
decision will be final or whether it will be appealed within the
30-day deadline. A change of government occurred two days before
the decision was rendered and so this matter will be the first test
the new Liberal government will have to meet.
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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