A recent judgment of the Quebec Superior Court has shed new light on an issue that has puzzled businesses in the province for many years. Can you display a trade-mark in a language other than French? How does this relate to the requirement that a business must have a French name?
Language issues are notoriously delicate in Quebec, as evidenced by a recent case on the language of storefront signs and displays.
On April 9, 2014, the Superior Court of Quebec rendered its decision in Ma- gasins Best Buy ltée v. Québec (Procureur général), which was eagerly awaited by numerous businesses in the province.
The events that led to this judgment started in 2010, when the Office québécois de la langue française (“OQLF”), the government body in charge of enforcing language legislation, began sending letters to businesses us- ing English-only trade-marks on their storefront signs, threatening them with legal action, fines and the revocation of their francization certificates if they did not change their signs by adding French generic terms – for instance, descriptive words such as magasin (store), or entre- pôt (warehouse). In doing so, the OQLF was breaking away from a practice that it had maintained for some 18 years.
In October of 2012, a group of major retailers, operating some 215 stores in Quebec, applied to the Superior Court for a declaratory judgement ruling that the display of their trade-mark in a lan- guage other than French was authorised on signs and on public advertisements and, in particular, on storefronts.
Generally, under the Charter of the French Language (“Charter”) and the Regulation respecting the language of commerce and business (“Regulation”), French is the exclusive or predominant language of business. Exceptionally, us- ing a trade-mark in a language other than French is allowed, provided no French version of the trade-mark has been registered. The problem here was with the public display of the English- only trade-mark on the storefront.
The OQLF’s change of course was not in response to amendments to the legisla- tion, nor was there any change in how the businesses were displaying their trade-marks. The OQLF simply decided that it would start applying the law more rigorously in response to an al- leged increase in the number of busi- nesses circumventing the Charter by registering English-only trade-marks.
In a very elaborate decision, Justice Michel Yergeau dismissed the govern- ment’s arguments. Since it is the es- sence of a trade-mark to be used to de- scribe a company’s products or services, the retailers had the right to use English-only trade-marks and display them. The Court declared that the OQLF’s former tolerance of displaying trade-marks un- accompanied by French generic terms was in accordance with the Charter and the Regulation. In essence, the busi- nesses were allowed to rely on the OQLF’s former tolerant position.
Impact on businesses
So is that the end of the story? Perhaps not. The Court remarked that the OQLF’s change of position had been triggered by alleged abuses. This could prompt government to enact more stringent legislation. And, as of this writing, the Quebec Attorney General has filed an appeal of this decision.
For the moment, the storefront signs of your local Best Buy, Costco Wholesale, Toys “R” Us and others should retain their familiar look.
Still, this case involved a very delicate distinction between the rules on busi- ness names and those on trade-marks. If you use trade-marks, logos or signs in a language other than French, we sug- gest that you discuss the impact of this case with your legal advisor at RSS.