On April 27, 2015, the Québec Court of Appeal, in an
unanimous decision, confirmed that businesses can continue to use
their non-French registered trademarks on storefront signs without
running afoul of the rules governing the language of business in
the province of Québec, specifically the Charter of the
French Language ("Charter") and its
Regulation respecting the language of commerce and
business (the "Regulation"). This
ruling confirms the decision rendered by M. Justice Yergeau of the
Superior Court of Québec last year, holding that the Charter
and Regulation were clear in allowing a registered trademark to be
displayed in a language other than French.
As reported in our
previous bulletin, the Superior Court of Québec had
rejected all the arguments put forward by the Attorney General of
Québec, ruling that the Charter and its Regulation were
clear and that there was no doubt as to their proper application
and interpretation. This decision by the Superior Court was
appealed by the Attorney General on the basis that any business
name appearing on a public sign in Québec, even if that
business name is a registered trademark, should be first and
foremost considered use of a business name and accordingly, be
subject to the Charter's requirements for names, specifically,
that it had to be in French, displayed in both French and another
language, or combined with French generic term. The Attorney
General argued that the judge had erred in its decision in the
By restricting the definition of the
word "name" in the Charterand the Regulation to that of a
corporation's constitutive name;
By concluding that a trademark used
by a business in their public displays cannot be assimilated to
their "name", but is used to identify its services;
By deeming it sufficient to apply the
exception in the Regulation to settle the matter and in giving a
restrictive interpretation to the section in the Regulation
requiring an expression in a language other than French that
appears in a business name to be accompanied by a generic term in
the French language.
The Attorney General's arguments were all rejected by the
Court of Appeal, which held that a trademark that has no French
element can, even when used as a name or as a business name, be
displayed as is without the addition of any French language. The
Court of Appeal stated that nothing in the Charter (or other laws)
allows it to come to any other conclusion, a conclusion which also
corresponds to the interpretive use the Office
Québécois de la langue française
("Office") has practiced for over 15 years.
In fact, the Charter provides that the name of a business must
be in French and that public signs and posters in Québec
must be in French or in another language together with French,
provided that the French text appears as markedly predominant. Its
Regulation also states that a business name can be in a language
other than French provided that the expression is used with a
generic term in the French language. However, the Court of Appeal
held that section 25 of the Regulation is a clear exception to
these rules, providing that a "recognized trademark"
within the meaning of the Trade-Marks Act may appear
exclusively in a language other than French on all types of signs,
including signage on storefronts, subject to a French version of
the trademark having not been registered with the Canadian
Intellectual Property Office.
The Court of Appeal held that the promotion and protection of
the French language is, in Québec, a recognized imperative,
obeying a real and persistent need. The use of French in the public
square is one of the cornerstones of this policy. That said, the
Charter and its prescribed use of French must be in the spirit of
fairness and openness recognized in the Charter's preamble as
well as in compliance with the limits upheld by the Canadian
Constitution, particularly in terms of the division of powers and
freedom of expression.
The deadline for the Attorney General to seek leave to appeal
the Court of Appeal's ruling to the Supreme Court of Canada is
June 26, 2015. Failing an appeal, the Government could
decide to amend the Charter in order to force businesses to
include a descriptive or generic term when using English-only
trademarks on storefront signs.
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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