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Retailers Win Round One in Quebec Signage Battle




by:
Jennifer E. McKay
Perley-Robertson, Hill & McDougall LLP/s.r.l. - Ottawa Office

 
June 17, 2014

Previously published on June 11, 2014

French has been the official language of commerce in the province of Quebec since 1977 when Quebec’s Charter of the French Language (“the Charter”) came into force. According to the Charter, French must be given equal or greater prominence to any other language on all public signs, posters, commercial advertising, inscriptions on products, labels, containers, wrappings, and any inserts/ documents supplied with such products.

The Charter is administered by the Office Quebecois de la Langue Française (“the OQLF”). While the OQLF has the authority to act of its own volition, in practice, the system is complaint based. If, subsequent to an investigation, the OQLF feels that there is a violation of the Charter, a courtesy letter is generally issued as a first resort providing a time frame within which to remedy the violation. If the alleged violator does not comply, a formal cease and desist letter is issued imposing a strict deadline for compliance. If the matter is not resolved at that point, the Attorney General takes over with the authority to institute penal proceedings. Anyone found to be in violation of the Charter can be fined up to $20,000 for a first offence, more for subsequent offences.

Companies who comply with the Charter can obtain government issued “francization certificates” which may entitle them to government grants.

Since 1993, a significant exception to the general rule of the requirement for French predominance has been that trade-marks recognized under the Trade-marks Act may be used exclusively in a language other than French as long as no French version of the trade-mark has been registered. For years, many retailers with registered trade-marks identified their businesses by use of their registered trade-marks only.

In 2010, however, the OQLF adopted a new policy modifying the recognized trade-mark exception in relation to trade-marks appearing on public signs. The OQLF decided that these were corporate names which must comply with the Charter’s provisions relating to corporate names. The Charter provides that corporate names containing a word or expression in a language other than French must be accompanied by either a French slogan or French wording that identifies the business activities or fields of endeavor of the corporation (e.g.: Café STARBUCKS) regardless of whether the corporate name is a registered trade-mark. A number of retailers had been told by the OQLF to add a French descriptor to their trademarked names, or risk losing their francization certificates. In response to the OQLF’s new policy, Best Buy, Costco, Gap, Old Navy, Guess, Walmart, Toys R Us and Curves joined forces and filed a motion for declaratory judgement in Quebec Superior Court arguing that the OQLF was misapplying the Charter by confusing a trade-mark with a trade name and that the OQLF’s current position contradicts its previous interpretation of the Charter.

The Quebec Superior Court issued a decision on April 9, 2014 holding that English trade-marks on store-front signage do not need to be accompanied by a French descriptor of the nature of the business. The Court rejected the OQLF's new interpretation of the Charter after a considered review of the history and intent of the Charter and its Regulations, and held that trade-marks and trade names are separate legal concepts governed by their own sets of rules. The Court held that the Charter and its Regulations create a distinct category for recognized trade-marks which supports the position that the legislators chose to recognize the special status of trade-marks in the Charter. The Court further noted that the Charter and the associated Regulations are clear and have been supported by consistent legislative interpretation for two decades by the OQLF. The Court commented that it is for Quebec’s legislators to intervene and decide whether legislative change is required to protect Quebec’s French language landscape against trade-marks in other languages and English in particular. The Court cautioned, however, that should the government decide to amend the Charter, it should keep in mind that trade-marks are under the Federal government’s Jurisdiction.

Not surprisingly, the Attorney General of Quebec has appealed the decision of the Superior Court on behalf of the OQLF. Trade-mark stakeholders will be closely following this matter to see if the decision of the Superior Court is upheld on appeal.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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Jennifer E. McKay
Perley-Robertson, Hill & McDougall LLP/s.r.l.
 
Ottawa Office
 
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