On April 9, 2014, the Quebec Superior Court issued its 55-page
decision in Magasins Best Buy ltée c. Québec
(Procureur general). The action had been initiated by
certain major retailers including Wal-Mart, Best Buy, Guess, Gap,
Old Navy, Guess, Walmart, Toys "R" Us and Curves against
the Office québecois de la langue
française (OQLF), the provincial
Quebec government organization that is responsible for ensuring
compliance with Quebec's French language laws. The action
sought to recognize the retailers' right to display
English-only trade-marks on public storefront signage in Quebec, a
right the OQLF was contesting.
In Quebec, Bill 101, the Charter of the French Language
(Charter), requires that the language on public
signs be predominantly in French. Another rule in the Charter
requires that businesses operating in Quebec use a French version
of their firm name whenever the use of French is mandated. A
firm name displayed on the sign may include words in a language
other than French, provided that the non-French term(s) is
accompanied by a generic French term. Examples of generic
French terms used are "Magasin" (store) or
The Regulation Respecting the Language of Commerce
and Business (the Regulation) under the
Charter, provides an exception to the general signage rule for
non-French trade-marks. Such trade-marks may appear
exclusively in a language other than French (i.e. without a generic
French term), provided that the mark is recognized as a trade-mark
under the Canadian Trade-marks Act and a French version
of the same mark has not been registered.
The OQLF had allowed businesses to display their non-French
trade-marks for nearly two decades without opposition when,
somewhat suddenly, the language enforcement body reversed its
position, issuing a resolution in 2008 condemning the practice of
registering English trade-marks with the CIPO, the Canadian Intellectual Property
Office, suggesting that it was a way of circumventing the
Charter's provisions on public signs. Then, in 2010, the
OQLF began an active publicity campaign consisting of press
releases, warnings and demand letters sent to the Plaintiff
companies (among many others), in which it stated its position that
an English-only trademark on a sign was a firm name use which
required the addition of a generic French term.
In response to the OQLF's new position, the Plaintiff
companies instituted an action for a declaratory judgment in 2010,
asking the Quebec Superior Court to declare that the usage of
non-French trade-marks on public signage is a compliant usage which
does not infringe the Charter or its Regulation.
In his decision, Justice Yergeau ruled in favour of the
Plaintiffs and held that the Charter and its Regulation did indeed
allow the display of non-French trade-marks on public
signs. The Court dismissed every argument put forward by the
OQLF, holding that the Charter and its Regulation clearly provided
an exception for trade-marks, and even created a "distinct
niche" for them.
The Court reasoned that a trade-mark is a distinct legal concept
that differs markedly from firm names and trade names. The
mere act of publicly displaying a non-French trade-mark outside of
a business' premises does not, in and of itself, convert the
trade-mark usage into a firm name or trade name usage, that would
require the addition of a generic French term (as is required under
the Charter in respect of use of firm names).
The Court also held that the OQLF's past practice of
tolerating the public display of non-French trade-marks and
treating such display as compliant with the law (i) established an
interpretive use over a sufficiently long period of time to give
the Plaintiffs reason to believe that their practices complied with
the law, and (ii) further confirmed the meaning of the clear
language of the Charter and the Regulation.
In its concluding remarks, the Court noted that it was not the
Court's role to change the status quo with a declaratory
judgment when the law clearly carved out a trade-mark exception to
the general rule respecting the predominant use of French in public
signs or the addition of a French generic term to an English firm
name. Despite the inherent difficulties associated with
trade-mark law, a matter of Canadian federal jurisdiction that it
also subject to international treaties ratified by Canada, the
Court stated that it is up to the Quebec government to amend
Quebec's language laws if it saw the proliferation of English
trade-marks on public signs as a threat to the status of French in
On May 8, 2014, the OQLF appealed the Superior Court's
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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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