In an effort to protect the vulnerable nature of the French language in Quebec, the province of Quebec adopted the Charter of the French Language (the "Charter"). Adopted in 1977, the Charter is a legislative measure designed to promote the use of the French language throughout Quebec in areas such as education, civil administration, law and commerce. With respect to its application in the area of business and commerce, the Charter requires that public signs and posters as well as commercial advertising (art. 58), inscriptions on products (art. 51) and the publication of brochures, catalogues, folders, commercial directories and any similar publications (art. 52) be in French. A company doing business in Quebec and engaging in such activities must therefore ensure that the French language is used, or, if used with another language, that the French portion is at least equal to the other language portion, except for public signs and commercial advertising where French must be markedly predominant.
The Charter, however, provides certain exceptions to this rule. The Regulation respecting the language of commerce and business (the "Regulation") provides in articles 7, 13 and 25 that French need not be used in the following four situations:
i) the name of a firm established exclusively outside Québec;
ii) a name of origin, the denomination of an exotic product or foreign specialty, a heraldic motto or any other non-commercial motto;
iii) a place name, a family name, a given name or the name of a personality or character or a distinctive name of a cultural nature; and
iv) a recognized trade mark within the meaning of the Trade-Marks Act.
The Regulation provides that where the expression used is a trade-mark that has been registered with the Canadian Intellectual Property Office, it may be used exclusively in a language other than French unless a French version of this trade-mark has been registered.
The situation is less clear with respect to unregistered trade-marks or trade-marks that are in the process of being registered. Despite the fact that the Trade-Marks Act recognizes unregistered trade-marks as trade-marks, the Office québécois de la langue française, the authority in charge of enforcing the Charter, took the position that unregistered trade-marks and trade-marks in that are in the process of being registered should not benefit from the exception provided for in the Regulation.
However, as noted by Justice James L. Brunton in Centre sportif St-Eustache c. Québec (Procureur général), 2009 QCCS 3307, the Court is not bound by the interpretation given to the Charter by the Office québécois de la langue française. In rendering such a decision, Judge Brunton reaffirmed the previous decision rendered by the Court of Quebec in Québec (Procureur général) c. St-Germain Transport (1994) inc., 2006 QCCQ 7631, which held that "[TRANSLATION] it is not necessary to register a trade-mark for it to be recognized as a trade-mark."
In order to be recognized as a trade-mark, the expression must also be used as a trade-mark; that is, used for the purpose of distinguishing the products or services of the owner of the trade-mark from those of others. Proving such use, however, is not always easy. For instance, in Centre sportif St-Eustache c. Québec (Procureur général), the Superior Court, in reviewing a decision of the Court of Quebec, held that the a unilingual English company name displayed in front of the Appellant's building which was not directly related to the products or services of the Appellant was insufficient to fall under the exception provided for in the Regulation. It is regrettable, however, that the Court failed to examine the possibility of linking the use of the company's name to the service offered by the Appellant, in this case, the operation of a bowling alley. Also, in Québec (Procureur général) c. St-Germain Transport (1994) inc., the use of an expression indicating the year of manufacture of a vehicle ("Class of 200_") was deemed insufficient to be qualified as use as a trade-mark since it described a characteristic of the good being sold.
In enforcing the Charter, the Office québécois de la langue française can institute penal proceedings against individuals or companies who violate the Charter. All persons found guilty of such an offence risk being fined an amount ranging from $250 to $7000 per infraction.
It follows therefore that the most effective way of ensuring that one benefits from the trade-mark exception provided for by the Regulation is to register the unilingual expression as a trade-mark with the Canadian Intellectual Property Office. Furthermore, in light of the ambiguity created by the decision in St-Germain Transport, such protection becomes imperative for the holders of trade-marks that may be suggestive of certain characteristics of the goods being sold. In effect, companies should consider registering their unilingual trade-marks to avoid potential legal proceedings and at the same time benefit from the other advantages associated with registering a trade-mark.