June 12 2014

NEW FRENCH CHARTER DECISION ON PUBLIC DYSPLAY OF TRADEMARKS

Jonnaert Caroline

 

The Quebec Superior Court issued an important decision on April 9 regarding trademarks on signs and posters. In a highly anticipated ruling, Justice Michel Yergeau stated that companies whose trademarks were registered only in a language other than French could display them as is, without adding a generic French word (e.g. “magasin” or “boutique”), including on storefronts.

 

 

Summary of the Facts

 

The Superior Court’s ruling seems to put an end to a practice adopted by the Office québécois de la langue française (“OQLF”) a few years ago. For some years now, the OQLF has demanded of several businesses that they add a generic French word to their trade names (for example, Best Buy and Gap) displayed only in another language. According to the Charter of the French Language, public signs must be in French, either exclusively or in a markedly predominant manner. In the case of company names, a generic French word must be added to any name displayed in another language. However, an exception is made for trademarks registered only in a language other than French. These trademarks do not have to be translated or have a generic French word added to them. To support its position, the OQLF argued that a denomination displayed on a storefront was more similar to a trade name than a trademark. In reaction, several retailers (Best Buy, Costco, Gap, Old Navy, Guess?, Wal-Mart and Curves) turned to the Superior Court for a ruling on the matter, said retailers wishing to use the exception applicable to trademarks.

Superior Court Decision

In a much anticipated decision, written by Justice Yergeau, the Superior Court granted the motion of seven companies and rejected the OQLF’s position on the application of the rule regarding corporate names. According to the Superior Court, the denominations in question were trademarks registered only in another language and they benefited from the exception applicable to trademarks. Therefore, as they are not trade names, no generic French word is required.

What Next?

This ruling has been extensively discussed and has in all likelihood reassured many retailers regarding the use of their trademarks registered only in another language. However, the story does not end there: the Attorney General had 30 days to appeal the decision and has done so. The Quebec government filed a notice of appeal in May. Consequently, uncertainty remains for business owners regarding the requirements applicable to their denominations on storefronts in Quebec, at least until the Quebec Court of Appeal settles the issue.

We will follow the case closely.

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