December 3 2015

Displaying trademarks in english and The Charter of the french language

Jonnaert Caroline

Article is writed by Ms. Caroline Jonnaert and Ms. Andrée-Anne Jeansonne

On April 9, 2014, the Québec Superior Court ruled that companies whose trademarks are registered only in a language other than French may display them as is, including on storefronts, without adding a generic French word (e.g. “magasin” or “boutique”). The Court of Appeal confirmed unanimously this decision on May 1st, leading to a number of articles on the subject.

 

Summary of the Facts

According to the Charter of the French Language (the “Charter”), public signs must be in French, either exclusively or in a markedly predominant manner. In the case of trade names, a generic French word must be added to any trade name displayed in another language, pursuant to section 27 of the Regulation respecting the language of commerce and business. However, an exception is made for trademarks registered only in a language other French. These trademarks do not have to be translated or have a generic French word added to them.

However, for some years now, the Office québécois de la langue française (“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. To support this position, the OQLF argued that a denomination displayed on a storefront was more similar to a trade name than a trademark.

Courts’ Rulings

In its much anticipated decision, the Superior Court ruled against the OQLF’s arguments, concluding that the denominations in question were trademarks registered only in another language and that they benefited from the exception applicable to trademarks.  Therefore, as these are not trade names, no generic French word is required.

 The Quebec government appealed this decision and the appeal was heard on April 27.

The Court of Appeal upheld the decision of the Quebec Superior Court, confirming that under the Charter and its regulations, a trademark registered only in another language than French and without a French translation may be publicly displayed as is. According to the Court of Appeal, the rules regarding trade names are not applicable to public signs and commercial advertising and do not have precedence over the exception applicable to trademarks.

What Next?

In a news release last June 17, Ms. Hélène Rivard, minister for Culture et Communications and in charge of Protection et Promotion de la langue française, announced that the government would modify in fall 2015 the Regulation respecting the language of commerce and business in order to promote the presence of French on businesses’ storefronts. On the same day, Ms. Stéphanie Vallée, minister for Justice, announced that the Quebec government would not apply for leave to appeal the Court of Appeal’s ruling.

Business owners must now wait to know which requirements they will have to comply to under the new provisions regarding public signs in Quebec. We follow the case closely.

 

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