One of the most widely used exceptions to the Charter of the French Language (the “Charter”) requirements for public signs and posters and commercial advertising is the English-only trademark exception. For almost 20 years, the Office québécois de la langue française (“OQLF”), the body responsible for ensuring compliance with the Charter, did not object or intervene when businesses used English-only recognized trademarks on the signs outside their premises, provided that no French version of the said trademark had been registered. This is commonly known as the “trademark exception.”
However, since November 2011, the OQLF is attempting to change the rules by insisting that a business’ recognized English-only trademark on signage must be used with a French generic term (e.g. “Les magasins TRADEMARK," "Café TRADEMARK,” etc.), the absence of which would constitute a breach of the Charter and the Regulation Respecting the Language of Commerce and Business (the “Regulation”). The basis for this new interpretation does not derive from a change in the legislation but from a campaign launched by the OQLF supporting a stricter use of the French language in storefront signs.
The Charter and the Regulation contain provisions that deal with the use of trade names and trademarks.
Section 25(4) of the Regulation states:
On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:
(4) a recognized trademark within the meaning of the Trade Marks Act (R.S.C. 1985, c. T-13), unless a French version has been registered.
Section 27 of the Regulation states:
An expression taken from a language other than French may appear in a firm name to specify it provided that the expression is used with a generic term in the French language.
On the one hand, (i) the general principle is that public signs and posters and commercial advertising must be in French or in French and in another language provided that French is markedly predominant, and (ii) pursuant to s. 27 of the Regulation, it is permissible that an expression taken from a language other than French appears in a trade name provided that said expression is used with a generic term in the French language. On the other hand, the Regulation provides that a recognized trademark may appear exclusively in a language other than French on public signs and posters and in commercial advertising, unless a French version of the said trademark has been registered.
The new position taken by the OQLF is that by virtue of s. 27 of the Regulation, trademarks appearing on storefront signs are used as trade names and consequently cannot benefit from the trademark exception. According to the OQLF, it is now forbidden to display a recognized trademark exclusively in a language other than French on storefront signs without adding French generic language.
A Clarifying Decision Underway?
Some clarification to this new approach of the OQLF may come from the Québec courts. A court challenge has been instituted by seven retailers (Best Buy, Costco, Gap, Old Navy, Guess, Wal-Mart and Toys “R” Us) and a franchisor (Curves International). They have petitioned the Québec Superior Court for a declaratory judgement that would maintain the former interpretation of the trademark exception.
Essentially, these retailers allege that pursuant to s. 25(4) of the Regulation, the display of a recognized trademark exclusively in a language other than French should be permitted on storefront signs without the need of adding French generic language, except where a French version of such trademark has been registered.
The ruling in this case should provide clearer guidelines on how to interpret the current Charter and Regulation provisions concerning trademarks and trade names. Meanwhile, depending on your specific circumstances, it may be prudent to comply with the current requirements imposed by the OQLF in order to avoid sanctions, such as the imposition of fines or the suspension, revocation or refusal to renew francization certificates.
Proposed Amendments to the Charter
On December 5, 2012, the Parti Québécois, the ruling party forming Québec’s minority government, introduced Bill 14 to the Québec National Assembly, entitled An Act to Amend the Charter of the French Language, the Charter of Rights and Freedoms and Other Laws (the “Bill”). The proposed amendments to the Charter mainly target semi-public agencies, the language of labor relations, business and the Québec education system and the powers of the OQLF. The Bill is still at the consultation stage and has not yet come into force. Worthy of note, Québec’s Premier has recently declared that the chances that the Bill will be adopted are slim.
The Bill as introduced does not amend the sections of the Charter and Regulation respecting the trademark exception nor does it include provisions that would help resolve the current debate.