On April 9, 2014, the Québec Superior Court rendered its highly anticipated judgment in a declaratory judgment proceeding involving eight of Québec’s leading retailers. The retailers requested that the Court clarify whether their use of a non-French trademark on storefront signage violated the Charter of the French Language (“Charter”) or its Regulation respecting the language of commerce and business (“Regulation”). Less than a month later, the Quebec Attorney General filed an appeal requesting the Quebec Court of Appeal to reverse the judgment in first instance and declare that the use of a trademark on outdoor signage constitutes the use of a business name.
The proceeding came on the heels of the Office québécois de la langue française’s (“Office”) previously publicized campaign aimed at urging Québec businesses to add a French generic descriptor, phrase or expression to non-French trademarks displayed on outdoor and storefront signage. (See the Gowlings AdBytes article Office québécois de la langue française Targeting English Marks on Commercial Signage in Québec dated February 1, 2012 for more information.)
The general rule under the Charter for public signs, posters and commercial advertising provides that they must be in French, or in French and another language if French is markedly predominant. Retailers in Québec had been relying on the “recognized” trademark exception under the Regulation which specifically provides that a “recognized” trademark within the meaning of the Trademarks Act may be used exclusively in a language other than French on public signs, posters and commercial advertising to display their English-only marks on outdoor signage.
In contrast, the Office’s interpretation of the Charter was that the use of a trademark on storefront signage would be considered a business name and thus required to be accompanied by a French descriptor. As a result, there was a conflict between the Office’s campaign and the exception provided by the Regulation.
In examining the concepts of trademarks and business names under applicable federal and provincial laws, the Superior Court opined that a trademark forms part of a legal concept that is governed by its own rules and differs significantly from that of a trade name or business name. Noting that the legislator was well aware of the distinction between a trademark and a business name, Justice Yergeau expressed that the Court could not depart from the clear meaning of the “recognized” trademark exception. The Superior Court concluded accordingly that retailers could rely on the “recognized” trademark exception and were not required to add French descriptors to non-French trademarks featured on storefront signage. It remains to be seen whether the Court of Appeal will be of the same view.