The Superior Court of Québec, under the pen of Justice
Michel Yergeau, granted a declaratory judgment that maintains the
status quo of the well-known trade-mark exception for
public signs and posters and commercial advertising. The awaited
decision on April 9, 2014 settled the question outlined in our
This decision is consistent with what was allowed by the
Office québécois de la langue
française ("OQLF") for the past 20 years
before it recently changed its interpretation of the Charter of
the French Language (the "Charter"). The Court
declared that the exception found in section 25(4) of the
Regulation Respecting the Language of Commerce and
Business (the "Regulation") authorizes businesses in
Québec to use registered trade-marks, exclusively in a
language other than French, on the signs outside their premises
without the need of adding French generic language to their
trade-marks, provided that no French version of said trade-marks
had been registered.
The Court concluded that the trade-mark exception should be
maintained despite the position recently taken by the OQLF in which
it blurred the line between trade-mark use and trade name use.
Since 2011, the OQLF adopted an administrative position, whereby it
treated registered trade-marks appearing on storefront signs as
trade names. By doing so, the OQLF subjected trade-mark owners to
the requirements of section 27 of the Regulation. Pursuant to
section 27 of the Regulation, "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." After the adoption of this new
interpretation by the OQLF, many retailers that had used
English-only registered trade-marks on signs outside their premises
were threatened by the OQLF with statutory sanctions for
non-compliance with language requirements.
In order to justify his decision that trade-mark use should not
be confused with trade name use, Justice Yergeau not only adhered
to the conclusions sought by the Plaintiffs (Best Buy, Costco, Gap,
Old Navy, Guess, Wal-Mart, Toys "R" Us and Curves
International) and to the applicable principles of statutory
interpretation, but also canvassed the underlying linguistic
objectives that the Charter and the Regulation aim to protect in
Moreover, the Court declared that the OQLF's previous
practices in allowing the unhampered application of the trade-mark
exception for almost two decades, as well as the legislator's
clear choice in creating a different legal regime for the use of
registered trade-marks, were appropriate and compelling reasons to
defeat the recent interpretation adopted by the OQLF and to
preserve the status quo of the trade-mark exception.
In the wake of this decision, it is clear for the time being the
Charter and the Regulation allow businesses in Québec to use
their registered non-French trade-marks, particularly on storefront
signs, without the need of adding French generic language to their
trade-marks. This is provided that no French version of said
trade-marks had been registered. It is now up to the Attorney
General of Québec to decide whether or not to appeal this
Justice Yergeau did not deal with unregistered or "common
law" trade-marks in his judgement, so it is currently unclear
how the OQFL will treat common law trade-marks. Accordingly, owners
of English-only trade-marks should consider registering their
trade-marks in Canada so that the exception in the Regulation will
clearly apply to those marks.
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.
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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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