A recent case in the Court of Quebec (Quebec (Attorney General) c. 156158 Canada Inc. (Boulangerie Maxie's))provides clarification regarding what is meant by the term “markedly predominant” and confirms that a non-registered common law trademark can qualify as an exemption from the Charter of the French Language.
A number of English companies operating businesses in and around the Montreal area were charged with having violated provisions of the Charter of the French Language (the “Charter”) that prohibit or restrict the use of a language other than French in the Province of Quebec on public signs, posters, advertising, brochures and packaging. Specifically, the allegations included:
- Commercial signs written in a language other than French,
- signs that failed to respect the requirement of marked predominance of the French language,
- inscriptions on products, containers, wrappings or documents supplied with the product that were not in French, and
- promoting goods and services on the internet exclusively in English.
All of the Defendants but one were found guilty of violations of the French Charter. Two of the issues considered by the Court were of particular note.
- The interpretation of what is meant by the requirement that French be “markedly predominant”
Some of the Defendants argued that posting French language on a sign before the English version was enough to meet the criteria under s.58 of the Charter which requires that public signs can be in French and another language provided the French language is markedly predominant. The Court however disagreed and indicated that marked predominance refers to the greater visual impact of the French language when compared to the other language included on a sign and specifically stated “…simple priority in the placement of the French language does not clearly establish the visual predominance of the French language. When it comes to the language of the signs and the marked predominance of the French language, size does matter.”
- The exemption to the French translation requirement for a “recognized trademark”
Two of the Defendants also argued that the trademark exemption to s.58 of the Charter applied. The exemption provides that a recognized trademark can appear exclusively in a language other than French (unless a French version has been registered) on public signs, posters and commercial advertising. Neither of the Defendants’ alleged trademarks were registered and the issue therefore was whether the unregistered slogans used by the Defendants qualified as recognized trademarks. With respect to the first Defendant Mundi Canada Inc., the Court held that use of the phrase “Italian fancy leather goods” was nothing more than a generic description of the products sold by the company and as the phrase was not used to promote a product or service in a distinctive manner, no trademark exemption was established. However, with respect to the second Defendant Meldrum the Mover’s use of the phrase “Everything inside packed with pride” on a truck parked on the Defendant’s premises the Court noted that “the phrase rings like a slogan; it even rhymes” and, combined with the evidence presented, the Court was satisfied that the phrase qualified as a common law trademark exemption. Of note, the truck at issue was kept on the Defendant’s grounds only as a source for spare parts, parked in an area out of public view and it was alleged that the inspector from the Office québécois de la langue française had to trespass onto Meldrum the Mover’s grounds in order to view the vehicle. Based on these facts, the Court was also of the view that in any event the Charter does not encompass slogans posted in areas not intended for the public.
The case is important because it provides clarification as to what type of display or placement of the French wording will qualify as meeting the requirement that the French wording be “markedly predominant” and confirms that a common law mark that has been used in a distinctive manner qualifies for the trademark exemption to the Charter.