The Quebec Court of Appeal, in a unanimous decision rendered on
May 1, 2015,1 confirmed the first instance ruling
our analysis in April 2014) with respect to the public display
of trade-marks registered only in English, without being required
to add thereto a generic term in French.2
The facts in this case are spread out over the course of many
years. A number of retailers owning trade-marks registered in
English only (Costco, Best Buy, Guess, Old Navy, Toys 'R'
Us, etc., the "Retailers") have a long-standing practice
of publicly displaying these trade-marks in Quebec for business
signage purposes, pursuant to an exception to the requirement under
the Charter of the French Language3(the
"Charter") that public signs, posters and commercial
advertising be made in French. Subsection 25(4) of the
Regulation respecting the language of commerce and
business4 (the "Regulation") provides
that "On public signs and posters and in commercial
advertising, the following may appear exclusively in a language
other than French: a recognized trade-mark within the meaning of
the Trade Marks Act, unless a French version has been
Following the steps taken by the Office
québécois de la langue française
(Quebec's Language Bureau, hereinafter the "OQLF") in
order to compel businesses using English-language trade-marks to
'francize' their business signage and advertizing, the
Retailers filed a motion for declaratory judgment in order to
clarify the authorized derogations from the Charter, including
subsection 25(4) of the Regulation. The OQLF argued, both in first
instance and in appeal, that the public display of a trade-mark
could be equated with the display of a business name, which,
pursuant to the legislation applicable to business names, required
it to be used with a generic term in the French language, in
accordance with section 63 of the Charter.
The Court of Appeal dismissed this interpretation, confirmed the
trial judge's reasoning, and held that none of the trade-marks
in question were the "name of an enterprise" within the
meaning of sections 63 and 67 of the Charter, of articles 305 and
306 of the Civil Code of Quebec or of An Act Respecting the
Legal Publicity of Enterprises.5 The Court of
Appeal therefore determined that the Retailers' practices were
in compliance with the Charter and the Regulation, which allow the
public display of a trade-mark registered only in English, without
being required to add thereto a generic term or any other
descriptive element in French. The Court also added that subsection
25(4) does not require the owner of multiple trade-marks, one of
which is registered in French, to use one trade-mark rather than
the other. Furthermore, this provision does not place any
limitation on the nature of the display, and therefore includes all
types of signage, including signs affixed on storefronts.
1.Magasins Best Buy ltée v. Québec
(Procureur général), 2015 QCCA 747.
2.Magasins Best Buy ltée v. Québec
(Procureur général), 2014 QCCS 1427.
3.CQLR, c. C-11.
4.CQLR, c. C-11, r. 9.
5.CQLR, c. P-44.1.
The foregoing provides only an overview and does not
constitute legal advice. Readers are cautioned against making any
decisions based on this material alone. Rather, specific legal
advice should be obtained.
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