On May 1, 2015, the Quebec Court of Appeal issued its decision concerning the interpretation of Quebec’s Charter of the French language (the “French Charter”) and its interplay with trademarks. The Court upheld the decision of the Quebec Superior Court confirming that businesses can continue to use their registered trademarks on public signs outside their premises in the Province of Québec without the need to add French generic language. François Guay, Christian Bolduc and Jean-Sébastien Dupont of the Montreal office of Smart & Biggar successfully represented the International Trademark Association as an intervener in this proceeding.
In October 2012, several retailers (Best Buy, Costco, Gap, Old Navy, Guess, Walmart, Toy ‘R’ Us and Curves) filed a motion for declaratory judgment in the Quebec Superior Court seeking to have the Court confirm that the display of a registered trademark alone on a public sign, such as a storefront, in a language other than French (e.g. English) was in compliance with the French Charter.
The French Charter requires public signs, posters and commercial advertising to be in French, but also permits the use of French together with another language provided that the French is markedly predominant. An exception to the foregoing general rules also allows “recognized trademarks” within the meaning of theTrademarks Act to appear exclusively in a language other than French.
In 2010, however, the Office québécois de la langue française (the “OQLF”), the governmental body responsible for enforcing the provisions of the French Charter, changed its interpretation of the French Charter. Under the new interpretation, any business name appearing on a public sign in Quebec was considered use of a trade name (rather than a trademark) and accordingly, was subject to the French Charter requirements for trade names, namely, that it had to be translated to French or combined with French generic language. Practically speaking, such an interpretation would require a retailer such as Best Buy to either display a French translation of “Best Buy” on its storefront or precede it with French generic text such as “Boutique éléctronique”.
As previously reported in our April 10, 2014 IP Update, the Quebec Superior Court rejected all the arguments put forward by the Attorney General holding that the French Charter and its regulations could hardly be clearer and that there was no doubt as to its proper interpretation. The Attorney General alleged several grounds of appeal, which essentially reiterated the position that names displayed on retailers’ storefronts are in fact trade names, rather than trademarks in the strict sense, and should therefore respect the French Charter requirements for trade names.
In its decision, the Quebec Court of Appeal acknowledged that the promotion and protection of the French language in Quebec is a recognized imperative and that the use of the French language in public is one of the cornerstones of such a policy. However, with respect to public signs, posters and commercial advertising, the Court held that the French Charter already protects the French language in these media and that the respondents are in compliance with the French Charter.
The Court of Appeal clarified that the general rules for public signs (i.e., must be in French or French must be markedly predominant) are clear and that the exception for “recognized trademarks” is not limited to any specific type of public sign and thus addresses all types of signs, including signage on storefronts. Furthermore, the Court also noted that the Attorney General did not take into account that the French Charter expressly addresses the issue of trade names displayed on public signs, posters and commercial advertising. The Court of Appeal recognized that the French Charter and its regulations must be given a broad and generous interpretation in order to reach their objectives, and that the principles affirmed by the French Charter and clarified by the regulations must not be neutralised by way of exceptions. While such exceptions are to be interpreted narrowly, the Court of Appeal found that the exceptions reflect a balance created by the legislator and must be given their proper meaning. Moreover, the Court of Appeal indicated that although the French Charter does not preclude an interpretation differing from the one previously taken by the OQLF for more than fifteen years, the interpretation sought by the Attorney General does not in fact reflect the intent of the French Charter and its regulations.
The Attorney General has until June 26, 2015 to seek leave to appeal to the Supreme Court. In this regard, it will be interesting to see whether it decides to take this matter up to Canada’s highest court and/or perhaps defer to the legislator to decide if legislative changes are needed to protect Quebec’s French language landscape against trademarks displayed in other languages. For the time being though, this decision provides some reassurance to retailers and trademark owners doing business in Quebec.