Companies with English-only trade-marks have long benefited from certain exceptions to the general requirement that all printed material used in commerce must be displayed in French, as required by the Québec Charter of the French Language (“Charter”). The printed material, which is regulated by the Charter, includes any inscription on a product, its container or packaging as well as all commercial publications (such as catalogues, brochures and folders) and commercial advertising (including public signs and posters).
Notwithstanding the general rule, printed materials may be displayed in another language as long as certain specific conditions are met. Further, the Regulation Respecting the Language of Commerce and Business (“Regulation”) allows for a recognized trade-mark within the meaning of the Trade Marks Act (“Act”) to appear exclusively in a language other than French as an inscription on a product or in a commercial publication or advertisement, unless a French version of the trade-mark has been registered (“Trade-Mark Exception”).
In the past, there was some uncertainty as to whether an unregistered trade-mark, whose rights are based on the common law, would benefit from the aforementioned exception. The 2006 Procureur général du Québec v. St-Germain Transport (1994) inc.1 decision was the first Québec decision to clearly state that registration of a trade-mark was not required in order for the trade-mark to be considered as a recognized trade-mark under the Act and to specify that the use of a mark in association with a particular good or service during a certain amount of time may suffice to establish a right with respect to the particular mark. However, it would be up to the owner of the mark to prove the use and reputation of the trade-mark in association with a particular good or service.
This judicial interpretation of “recognized trade-mark” was also generally accepted by the Office québécois de la langue française (“OQLF”) for the purposes of the Charter’s interpretation of the Trade- Mark Exception. However, in its most recent annotated Charter, the OQLF has taken a more restrictive approach to the Trade-Mark Exception. In its comments, the OQLF specifies that in order to ensure the application of an objective and uniform standard, which will no longer be subject to interpretation, it now considers that the Trade-Mark Exception applies only to a mark that is registered with the Canadian Intellectual Property Office (“CIPO”), if the registration requirements for the trade-mark in question are fulfilled at the time that the Trade-Mark Exception is raised. The OQLF unofficially confirmed that such comments in the annotated Charter accurately reflect the OQLF’s latest interpretation of the Charter’s Trade-Mark Exception.
To date, there is no case law that refers to the OQLF’s new restrictive interpretation, which clearly goes against the holding in St-Germain Transport. In fact, the latest decision that raised the application of the Trade-Mark Exception in the context of commercial advertising reiterated the principle that an unregistered trade-mark may be recognized and protected as a trade-mark.2 This decision is currently under appeal. The OQLF unofficially confirmed that to date it has not tested its more restrictive interpretation of the Trade-Mark Exception before the courts.
The foregoing change in the OQLF’s interpretation raises a number of important issues for companies that currently rely on the Trade-Mark Exception, which is still recognized by Québec courts. It will be important for a company using an English-only unregistered trade-mark to balance the two conflicting views in order to determine how best to proceed. Despite the existing case law that to date continues to recognize that an unregistered trade-mark, which is recognized under the Act, may appear in English-only as an inscription on a product or in a commercial publication or advertisement, a company must now also consider the OQLF’s latest restrictive interpretation of the scope of the Trade-Mark Exception. In light of this uncertainty, it may be advisable for a company relying on a valuable unregistered trademark to now consider the possibility of having such trade-mark properly registered with CIPO.