The Office québécois de la langue française (the “Office”), the Québec government’s body in charge of the protection of French language in Québec, issued a new annotated version of the Charter of the French Language (the “Charter”) on September 29, 2008. This annotated Charter includes commentaries from the Office, giving its interpretation of the Charter. In an unexpected move, the Office changed, amongst others, its interpretation of the trade mark exceptions under the Regulations respecting the Language of Commerce and Business (the “Regulations”).
The general rule, set out in Sections 51, 52 and 58 of the Charter, is that all printed material used in commerce (including packaging, labels, commercial publications, advertising and public signage) must be in French, although another language (e.g. English) may also appear, as long as this other language display is not dominant or is less dominant than French in the case of public signage. However, there is an important exception for “recognized” trade marks. Specifically, a “recognized trade mark within the meaning of the Trade-marks Act” may appear in a language other than French “unless a French version has been registered”. The commonly accepted interpretation of this exception was that translation was not required if it could be shown that any “mark” was recognized as a trade mark. While it would be easier to show that a mark was “recognized” if the mark was registered under the Trade-marks Act, or an application was pending, it was open for any business to argue that the presentation of the mark was such that consumers would “recognize” it as a trade mark.
The Office's new interpretation is that a “recognized” mark means only a registered mark (and not even a mark that is the subject of a pending application). This new position is surprising given that the Regulations dealing with the trade mark exception specifically refer to both a “recognized” trade mark and a “registered” trade mark, and that jurisprudence has also confirmed that a “recognized” trade mark did not need to be registered.
The most recent case on this issue, P.G. du Québec v. Centre sportif St-Eustache Inc., dealt with commercial signage and the recognized trade mark exception under Section 58 of the Charter. The Court of Québec again confirmed that the recognized trade mark exception includes both registered and unregistered trade marks. It also, however, stated that the fact that a business evolved under a particular name does not necessarily confer "recognized" trade mark rights in that name. The Court explained that to excuse French language use requirements merely because the business is known in an area under a particular name would allow businesses to easily bypass the Charter. The defendant was found guilty and charged with a fine of $500. This decision is currently under appeal.
The Office’s motivation for the change in definition of “recognized” marks is likely based on several considerations. On an administrative level, it will be easier for the Office to apply objective and uniform criteria to complaints. There would no longer be any debate about what “recognized” means. In addition, the Office is confirming that any business seeking to rely upon the recognized trade mark exception will have the burden of clearly demonstrating trade mark status by first registering its trade mark. Lastly, on a political level, the Office probably needed to show that it was acting to prevent abuses of the trade mark exception, particularly on public signage. This is relevant since recent investigations published in Québec newspapers show that use of the French language has lessened in some parts of the Island of Montréal.
Despite the plain language of the recent annotations, the Office has informally indicated that it will not necessarily apply these new guidelines in every case. For Sections 51 and 52 of the Charter dealing with products inscriptions and commercial publications, the Office has indicated that it may accept the recognized mark exception for unregistered marks or marks subject to a pending application, depending on the circumstances. However, if such marks are very descriptive and primarily used to convey information about the product to consumers, the recognized mark exception might not be accepted.
For Section 58, dealing with public signage, the Office has indicated that it will be stricter in applying the new interpretation of the recognized mark exception.
It is important to point out that the Office’s commentaries do not amend the Regulations or the Charter. Businesses must now reconcile, on the one hand, the Charter, the Regulations, and some court decisions that confirm that a “recognized” mark can be used without translation and that recognized marks include both registered and unregistered marks with, on the other hand, the Office commentaries that say something else, namely that the exception only applies to “registered” marks.
In view of the foregoing, enterprises doing business in Quebec should consider the following:
- Keep the Charter in mind when selecting new marks. Whenever possible, use bilingual or coined words without any French or English connotation.
- Consider securing a trade mark registration for any English language mark to avoid confrontation with the Office over the definition of “recognized mark”. While any application is pending, we expect that the Office will not aggressively pursue a complaint. However, should the Office do so, consider requesting an expedited examination of the trade mark application.
- To make a claim to the trade mark exception, the mark must be clearly used as a trade mark. Thus, it should be displayed in a manner consistent with marks, with appropriate TM or ® notices or, respectively MC and MD, in French. The ® notice has been accepted in the past by the Office as an International symbol which does not need to be translated, as provided by Section 92 of the Charter.
- Care should be taken to ensure that any claims to “recognized” marks should not be seen as merely an attempt to avoid use of French language marks on package/sign inscriptions. Particularly if the wording in question is clearly descriptive, or conveys key consumer information, French should be used. This is important for both compliance and marketing reasons.
- Approach signage with greater caution. It is here that the Office will likely exercise less tolerance in accepting the recognized mark exception.
- Do not underestimate the marketing importance of French language usage, particularly in the province of Québec. More than 25% of Canada’s population is French-speaking.