On April 9th, 2014, the Honorable Michel Yergeau of the Superior Court of Quebec rendered a much awaited judgment on the controversial issue of trade-mark displays in a language other than French. On May 8th, the Government of Quebec decided to appeal this judgement.
Since its adoption in Quebec in 1977, the Charter of the French Language (the "Charter") has been at the center of much controversy. Adopted in an effort to protect the vulnerable nature of the French language in Quebec, the Charter requires that any public sign, poster, commercial advertising, inscriptions on products and the publication of brochures, catalogues, folders, commercial directories or any similar publication be in French, or predominantly in French. However, the Regulation respecting the language of commerce and business (the "Regulation") provides an exception to this general rule by accepting the use of a registred trade-mark which is not in French. Indeed, a trade-mark in a language other than French can be used in Quebec, provided that no French version of the trade-mark has been registered with the Canadian Intellectual Property Office (the "CIPO").
Until 2010, the Office québécois de la langue française's (the "Office") interpreted the Regulation as allowing for non-French trade-marks to be displayed in public, without requiring any addition of French terms. However, in the recent years, the Office modified its interpretation of the exception contained in the Regulation resulting in a potential conflict between the Regulation and certain rights granted under the federal trade-marks legislation. Indeed, the Office began to consider that trade-marks on buildings and on public signs to be a display of the company's name, requiring, pursuant to the Charter, the addition of a French descriptive when the name is in a language other than French. Following this new approach, the Office began sending notices, demand letters, as well as notices of suspension of francization certificates and statements of offences to multiple corporations requiring compliance with their recent interpretation of the Charter. This instigated the filing of a motion seeking a declaratory judgement by eight multinational corporations, namely Best Buy, Costco, Gap, Old Navy, Wal-Mart, Toys "R" Us, Guess? and Curves, to confirm their rights to use English only trade-marks on building fronts and public displays as per rights granted under the federal trade-marks legislation.
In its judgment, the Court stated that a trade-mark is a distinct legal concept governed by its own rules which differ significantly from those of trade names and company names. The display of a trade-mark, in association with services and products offered by a company, does not constitute a display of a company's name, and therefore no obligation to add a French generic term should be imposed. The judge held that the Charter and the Regulation specifically allow trade-marks to be displayed in a language other than French, without the addition of a French generic term, provided that no French version is registered with CIPO, and these laws cannot be interpreted in such a way that displayed trade-marks become synonymous with display of trade names or commercial names. Justice Yergeau added that only an amendment to the Regulation would, at this point, make the addition of a generic French term to an English trade-mark mandatory. It is important to note that this judgment is only applicable to trade-marks registered with the CIPO and does not consider unregistered English trade-marks.
In this particular case, the evidence showed that the trade-marks of most of the petitioners did not correspond to their company names, and therefore did not constitute a display of a company name. The Attorney General of Quebec, who was the defendant in this action, failed to demonstrate that these trade-marks were used as company names. On the contrary, the evidence showed the corporations' company names were different than the trade-marks used and displayed.
On May 8th, the Attorney General of Quebec appealed the judgment of the Superior Court. Note that, in the event that the appeal be dismissed, the Office may nevertheless request an amendment of the Regulations to uphold its interpretation of the Charter. Pending the judgment of the Court of Appeal, the decision of the Superior Court is suspended.
With special thanks to Sarah Villota-Nault (Articling student)
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