On September 20, 2013, the International Trademark Association (“INTA”), a not-for-profit association of more than 5,900 members consisting of trade-mark owners, trade-mark professionals and academics from more than 190 countries, was granted leave by the Quebec Superior Court to intervene in a declaratory judgment proceeding pertaining to the interplay between the Quebec’s Charter of the French language (the “French Charter”) and trade-marks. INTA is represented in this matter by François Guay, Christian Bolduc and Jean-Sébastien Dupont of the Montreal office of Smart & Biggar.
In Quebec, the French Charter requires that public signs and commercial advertising be predominantly in French, while providing an exception for “recognized trade-marks.” Until recently, the Office Québécois de la langue française (OQLF), the body in charge of applying and enforcing the French Charter, allowed businesses to use their registered trade-marks, regardless of their language, on signs outside their premises, consistent with the trade-mark exception.
However, in 2011, the OQLF adopted a new policy (without any legislative change) in which it specified that for storefront signs, the law pertaining to trade names would now apply to trade-marks, registered or not. In other words, any trade-mark appearing on a public sign on a building would now be considered to be a trade name use and the trade name rule requiring their translation into French or the addition of French generic language will apply.
In October 2012, seven retailers (Best Buy, Costco, Gap, Old Navy, Guess, Walmart and Toys "R" Us) joined forces and filed a motion for declaratory judgment in the Quebec Superior Court, arguing that the OQLF is misapplying the French Charter and its Regulation by confusing trade name use with trade-mark use and that its current position conflicts with previous policy statements.
INTA, which advocates for the support and advancement of trade-mark law around the world, sought leave to intervene in these proceedings to raise important trade-mark law issues and policies. In particular, it is INTA's position that the OQFL is blurring the line between trade-marks and trade names and that forcing trade-mark owners to add French generic language to their signs puts their trade-mark rights at risk.
The case will be heard on the merits by the Quebec Superior Court on October 21-23, 2013.