The Attorney General of Québec, who represents the
Office québécois de la langue
française ("OQLF"), has filed a
Notice of Appeal from the decision of the Québec Superior Court
issued on April 9, 2014 by which the Court confirmed that
businesses can continue using their registered trade-marks on
public signs outside their premises in the Province of
Québec without the need to add French generic language.
This decision was the result of proceedings for declaratory
judgment initiated in October 2012 by several well-known retailers
(Best Buy, Costco, Gap, Old Navy, Guess, Walmart, Toys
"R" Us and Curves) following a change in the OQLF's
interpretation of Québec's Charter of the French
language (the "French Charter"). The International
Trademark Association (represented by Smart & Biggar) also
successfully intervened in this matter to raise important
trade-mark law issues and policies.
At issue in these proceedings was the so-called trade-mark
exception provided for in the French Charter Regulation which had
allowed businesses, for almost two decades, to display their
registered trade-marks on public signs in a language other than
French without the need to add French generic language. However,
the OQLF recently changed its position and has since then
considered that any trade-mark appearing on a public sign in
Québec is in fact used as a trade name, which requires its
translation into French or the addition of French generic
As previously reported in our April 10, 2014
IP Update, the Québec Superior Court rejected all the
arguments put forward by the OQLF, holding that the French Charter
and its Regulation could hardly be clearer and that there was no
doubt as to its proper interpretation.
In its Notice of Appeal, the OQLF is alleging three different
grounds of appeal, namely:
The judge erred in his decision by equating
"nom" ("firm name" in the English
version) in the French Charter and its Regulation to the notion of
"raison sociale" or corporate name. The OQLF is
arguing that this interpretation is too narrow, and that
"nom" should be understood as any trade name
under which a business is operating.
The judge erred in not concluding that trade-marks displayed by
retailers on public signs outside their premises are in fact used
as trade names to distinguish their business (as opposed to their
services) from that of others. The OQLF suggests that, in this
context, trade-marks displayed by retailers are
The judge erred in not finding that the trade-mark exception
(which would only mean that a recognized trade-mark does not need
to be translated
into French) and the need to protect a trade-mark's integrity
are not incompatible with the rules in the French Charter for
corporate names and trade names which require the addition of French
It can be expected that, once again, retailers will be
vigorously defending their right to use and maintain the integrity
of their trade-marks as provided for in the French Charter, the
Trade-marks Act and international instruments.
Unless the parties request and/or the Court orders that this
matter be fast-tracked, this appeal will most likely not be heard
before the end of 2015.
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
advice. To obtain such advice, please communicate with our offices
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