On April 9, 2014, the Québec Superior Court rendered its
highly anticipated judgment in a declaratory judgment proceeding
involving eight of Québec's leading retailers. The
retailers requested that the Court clarify whether their use of a
non-French trademark on storefront signage violated the Charter of
the French Language ("Charter") or its Regulation
respecting the language of commerce and business
("Regulation"). Less than a month later, the Quebec
Attorney General filed an appeal requesting the Quebec Court of
Appeal to reverse the judgment in first instance and declare that
the use of a trademark on outdoor signage constitutes the use of a
The general rule under the Charter for public signs, posters and
commercial advertising provides that they must be in French, or in
French and another language if French is markedly predominant.
Retailers in Québec had been relying on the
"recognized" trademark exception under the Regulation
which specifically provides that a "recognized" trademark
within the meaning of the Trademarks Act may be used
exclusively in a language other than French on public signs,
posters and commercial advertising to display their English-only
marks on outdoor signage.
In contrast, the Office's interpretation of the Charter was
that the use of a trademark on storefront signage would be
considered a business name and thus required to be accompanied by a
French descriptor. As a result, there was a conflict between the
Office's campaign and the exception provided by the
In examining the concepts of trademarks and business names under
applicable federal and provincial laws, the Superior Court opined
that a trademark forms part of a legal concept that is governed by
its own rules and differs significantly from that of a trade name
or business name. Noting that the legislator was well aware of the
distinction between a trademark and a business name, Justice
Yergeau expressed that the Court could not depart from the clear
meaning of the "recognized" trademark exception. The
Superior Court concluded accordingly that retailers could rely on
the "recognized" trademark exception and were not
required to add French descriptors to non-French trademarks
featured on storefront signage. It remains to be seen whether the
Court of Appeal will be of the same view.
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