On April 9, 2014, the Honorable Michel Yergeau of the Superior Court of Québec rendered a much-awaited judgment on the controversial issue of trademark displays in a language other than French.
Since its adoption in Québec 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 Québec, 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 trademark which is not in French. Indeed, a trademark in a language other than French can be used in Québec, provided that no French version of the trademark 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 trademarks 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 trademarks legislation. Indeed, the Office began to consider that trademarks on buildings and 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 judgment 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 trademarks on building fronts and public displays, as per rights granted under the federal trademarks legislation.
In its judgment, the Court stated that a trademark 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 trademark—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 trademarks 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 trademarks 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 trademark mandatory. It is important to note that this judgment is only applicable to trademarks registered with the CIPO and does not consider unregistered English trademarks.
In this particular case, the evidence showed that the trademarks 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 Québec, who was the defendant in this action, failed to demonstrate that these trademarks were used as company names. On the contrary, the evidence showed the corporations' company names were different than the trademarks used and displayed.
UPDATE: On May 8, 2014 the Attorney General of Québec appealed the judgment of the Superior Court. However, on April 27, 2015, the Court of Appeal confirmed the Superior Court's decision that the Charter allows for the use of non-French trademarks (including English trademarks) on storefront/public signs and advertising in the province, provided that no equivalent French trademark has been registered. In doing so, the Court of Appeal unanimously rejected the Attorney General's interpretation of the Charter and the Regulations, holding that its interpretation effectively ignored the exception for trademarks under the law.
While the Attorney General has chosen not to appeal the decision to the Supreme Court, on June 17, 2015, Ms. Hélène David, Minister of Culture and Communications, as well as Minister of the Protection and Promotion of the French Language, released a press statement announcing that the Office intended to modify the Regulations in order to ensure better visibility for the French language on buildings and public signs. The Minister was careful to specify that the draft bill would ensure the integrity of trademarks, which fall under federal jurisdiction.
The draft bill, which was supposed to be presented in the fall of 2015, would offer businesses different options to ensure compliance, such as the possibility of adding a generic description or slogan to their trademark. No such draft bill has, however, been put forward to the legislature to date.
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