November 24 2016
Outdoor trademark signage: new rules for Quebec
This article was writen by Ms. Caroline Jonnaert and Ms. Andrée-Anne Jeansonne
The new regulations for outdoor trademark signage come into effect today, November 24, in Quebec. These modifications were discussed in public consultations last spring before being published in the Gazette officielle du Québec on November 9, 2016.
The language issue regarding trademarks on outdoor signs and posters has been widely discussed over the last few years.
Under the Charter of the French Language (the “Charter”), public signs and commercial advertisement must be in French, either exclusively or in a markedly predominant manner. However, the Charter provides some exceptions to this provision, notably with regard to trademarks. Indeed, a trademark in a language other than French and recognized within the meaning of the Trade-marks Act can appear as is, as long as no French version of the trademark has been registered.
In May 2015, in what has become known as the Best Buy case, the Court of Appeal upheld the decision rendered in 2014 by the Superior Court and officially ruled that companies whose trademarks were only registered in a language other than French could continue displaying them without having to add a French generic term, contrary to what the Office québécois de la langue française (“OQLF”) claimed.
Shortly after this ruling, the government announced its intention to modify the regulations in place in order to promote a more visible presence of the French language on storefronts in Quebec. The government’s decision led to the adoption of the regulation amending the Regulation respecting the language of commerce and business.
Companies established in Quebec and whose trademarks are only in a language other than French must now add terms to their storefront signage to ensure “a sufficient presence of French”. More precisely, these trademarks must have one of the following:
- A generic term (i.e. a description of the company’s line of business, for example “Magasin de chaussures”);
- A description of the products or services offered (for example, “Chaussures pour enfants”);
- A slogan in French (for example, “Chaussez vos enfants avec style”); or
- Any other term or indication favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site (for example, “Nos chaussures sont faites pour résister à l’hiver québécois”).
- These elements must be designed, illuminated and placed so as to make them easy to read at all times along with the trademark. Therefore, if the trademark is illuminated at night, the French addition should also be illuminated.
- These new requirements apply to the following signage that includes trademarks in a language other than French:
- Signs or posters outside a building (linked to or attached to it) including on the roof;
- Signs or posters outside premises located in a building or a larger property complex (for example, a shopping centre or shopping strip);
- Signs or posters inside a building or premises that are meant to be read from the outside; and
- Signs or posters on a bollard or other independent structure.
The new rules do not apply to trademarks displayed on company cars or in-store displays. Trademarks appearing on commercial advertising (such as catalogues, brochures and websites) are also not affected by the new requirements.
COMPLYING WITH THE NEW RULES
Companies with existing signs or posters or that are part of a franchise network have three years to comply with the new regulations, i.e. until November 24, 2019. However, companies installing new signs or posters or replacing existing signs or posters must immediately comply with the new requirements.