Canada: Signs With Registered English Only Trademarks In Québec? Not A Problem If You Have Sufficient And Visible French Somewhere Close By

On Wednesday May 4, 2016, the Québec Minister of Culture and Communications and Minister Responsible for the Protection and Promotion of the French Language, Hélène David, introduced draft amendments (the Proposed Amendments) to certain regulations under the Charter of the French Language  (the Charter) to ensure the presence of French where commercial signs and posters display trademarks exclusively in a language other than French. This article provides some background relating to the Proposed Amendments as well as a summary of some of the key provisions.

Background

The Charter requires the language on commercial signs to be predominantly in French and the Regulation defining the scope of the expression "markedly predominant" for the purposes of the Charter of the French language defines what this means. However, the Regulation respecting the language of commerce and business  provides an exception for recognized trademarks under the Trade Marks Act. Such trademarks may appear on commercial signs exclusively in a language other than French unless a French version of the trademark has also been registered.

In 2010, the Office québécois de la langue française (the OQLF), the body that administers the Charter, started requiring businesses to add a generic identifier in French (e.g. Les cafés Second Cup) to public signs consisting of non-French only trademarks. The OQLF's view was that when a trademark is used on public signs as the company/store identifier, it was really the use of a "trade name" and not of a "trademark". Trade names must have French components and do not qualify for the trade-mark exception. In response, several major retailers sought and obtained a declaratory judgment from the Quebec Superior Court holding that their use of English-only trademarks on their signs was indeed compliant with the Charter and no French-language generic identifier was required under the current rules. The Quebec Court of Appeal upheld this judgment. The Quebec government decided not to appeal the decision to the Supreme Court of Canada, and instead announced its intention to modify the relevant regulations to ensure a more visible presence of French when a non-French trademark is used on a public sign in Quebec.

Over the next months, the Quebec government met with major Quebec retailers from the Retail Council of Canada to work out a legislative solution that would permit businesses to preserve the integrity of their non-French trademarks while satisfying the need for more French on signs without undue expense. The resulting solution is the Proposed Amendments.

The Proposed Amendments

Trademark integrity is preserved

The Proposed Amendments do not require that non-French trademarks be translated into French or be otherwise modified to include a French-language generic identifier. As such the integrity of trademarks, which are under federal jurisdiction, is preserved. Instead, the Proposed Amendments, if they come into force as currently drafted, will require a "sufficient presence of French" on the sign or nearby.

Scope is important: More than just signs on buildings

The scope of the Proposed Amendments is broad. The Proposed Amendments apply to non-French only trademarks on (i) signs and posters attached to the outside of a building, including its roof, and projecting and perpendicular signs, (ii) signs outside of premises that are situated inside a mall, a shopping centre or another property complex, and (iii) signs inside a building or premises if they are intended to be seen from outside. They also apply to non-French only trademark signs and posters on a bollard, totem or other independent structure near the building if there is no other outside sign or poster containing the non-French trademark. They do not apply to (i) totem-type structures that include multiple trademarks (such as a totem at the entrance to a mall listing the businesses in the mall), (ii) temporary or seasonal facilities, or (iii) signs on vehicles etc.

Guidance on what constitutes a "presence of French" on the site

The Proposed Amendments do not require existing trademark signs to be changed. The presence of French requirement can be fulfilled by adding a sign or poster that includes (i) a French generic term or a description of the products or services concerned; (ii) a French slogan; or (iii) other information in French about the products or services offered to consumers or persons frequenting the business (excluding such things as business hours and addresses). For example, a hardware store could use the word "Quincaillerie" in its signs, a grocery store, a slogan such as "Aliments frais et locaux" (fresh local food), and a restaurant could display its menu and daily specials in French in an adjacent window.

Guidance on when the presence of French will be considered "sufficient"

The Proposed Amendments do not require the additional French on signs to be "markedly predominant" over the sign with the non-French trademark, or even that it be the same size. However, the French signs must have permanent visibility, similar to that of the trademark displayed, and must be legible in the same visual field as that mainly covered by the trademark signs or posters. The French signs must therefore be located and lighted so it can be easily readable at the same time as the signs containing the non-French trademark, without necessarily being the same size, in the same number or materials or using the same lighting. French signs or posters that can easily be removed or destroyed will likely not be considered to have the requisite permanent visibility.

In term of legibility, the French sign must be legible (i) from the sidewalk along the façade on which the trademark appears, in the case of a sign or poster outside a building on a street bordered by a sidewalk, (ii) from the centre of the corridor or the space facing the premises, in the case of a sign or poster outside premises situated inside a building (such as a mall), or (iii) from the highway, in the case of a trademark visible from a highway.

Rules regarding compliance

The Proposed Amendments are subject to a 45-day comment period, but are expected to be brought into force in 2016 with few amendments, given the previous consultations. Once the Proposed Amendments come into force, businesses will have three years to bring existing signs or posters into compliance. All new signs installed as of the date of its coming into force (including the replacement of existing signs and posters) will have to comply immediately. However, the three-year period will also apply if the same non-French trademark is being used on signs or posters elsewhere in Quebec as part of a franchise system.

Non-compliance with the Proposed Amendments may result in businesses being fined from $1,500 to $20,000, with fines doubling for subsequent offences. Other penal provision may also apply.

Comments

There is useful guidance provided to businesses on the site of the Ministry of Culture and Communications including examples of what constitutes (or does not constitute) compliance.

However, as with any major change, there are some aspects of the Proposed Amendments that will require further clarification as businesses begin to change their current signs or add new signs to bring themselves into compliance. For instance, the concepts of "legibility in the same visual field" and "permanent visibility" may leave room for interpretation. We will provide further updates as new information becomes available.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions