On April 9, 2014 the Superior Court of Québec issued a long-awaited decision sought by various retailers who challenged the interpretation of Quebec’s language legislation by the Office Québécois de la langue française (OQLF) in relation to the use of trade-marks in a language other than French on storefront signs. In Magasins Best Buy ltée c. Québec (Procureur général), the court recognized the distinction to be made between trade-marks and the names of enterprises, and confirmed that a recognized trade-mark can be used on a storefront sign in Quebec without being accompanied by a generic description in French, even if that trade-mark is in English or another language than French.
In Quebec, pursuant to the Charter of the French Language (Charter), the general rule is that public signs, posters, and commercial advertising must be displayed in the French language. However, the Charter provides various exceptions. One such exception is provided by the Regulation Respecting the Language of Commerce and Business (Regulation) which provides that on public signs, posters and commercial advertising, a “recognized” trade-mark, within the meaning of the Trade-marks Act (Canada), may appear exclusively in the language other than French, unless a French version of that trade-mark is registered. Traditionally, this exception has allowed trade-mark owners to display their registered trade-marks in storefront signage and other advertising only in the English language, provided that the trade-mark owner did not also own a registered French version of the trade-mark.
In 2010, the OQLF adopted a different interpretation of the Charter, which limited the scope of the exception. Specifically, the OQLF took the position that use of a trade-mark on storefront signage meant that this term or expression was used as a “name” of the business or enterprise. Under the Charter, the use of trademark in English or in a language other than French in the name of an enterprise is permissible, provided that this mark is accompanied by generic French terms, which would generally provide a French language description of the business of the entity. The OQLF began an advertising campaign to publicize this position and eventually commenced penal proceedings against businesses (primarily retail stores) that displayed their trade-marks on storefront signage only in the English language without a French descriptor. The OQLF also informed some of these businesses that their good standing certificates issued by the OQLF – known as “francization certificates” – could be revoked.
As a result, a number of retailers began a proceeding to challenge the OQLF’s interpretation of the Charter in this respect by seeking a declaratory judgment from the Superior Court. Some of the retailers had received cease and desist letters from the OQLF before the motion for declaratory judgements and notices of infractions were subsequently issued. The Retail Council of Quebec and the International Trademark Association also intervened in the proceedings.
In his decision on the request for declaratory judgment, Justice Michel Yergeau reviewed the background of this issue by discussing, among other things, the history of language legislation in Quebec, the Supreme Court of Canada’s view of freedom of expression in the context of language, various amendments to the legislation, previous advice obtained by the OQLF on this issue, and the OQLF’s past practices.
This review highlighted the fact that the relevant retailers had been using their trade-marks on storefront signs for many years without objection from the OQLF. In fact, the OQLF had granted francization certificates to the retailers. As well, over the years the OQLF had responded to various complainants in relation to the use of English-only trade-marks on storefront signs by indicating that this practice was permitted under the Charter.
Based on legislation, case law, and international conventions on the subject, the court recognized the distinction to be made between the use of terms or expressions as trade-marks and as trade names or names of enterprises. On analyzing the text of the Charter, the court found that the provisions imposing the use of a French descriptor applied to the legal name of a business and declared that the application of this rule by the OQLF to the use of trade-marks on storefronts was incorrect. The court confirmed that a recognized trade-mark in a language other than French could be used on a storefront sign, without being accompanied by generic terms in French, provided that no French version of the trade-mark has been registered.
The court also found that the interpretation that was given by the OQLF over the past 20 years is an “interpretative usage” supporting the retailers’ interpretation of these provisions. Justice Yergeau concluded that “it is not up to the Court to now change the course of events through the magic of a declaratory judgment when the legislative and regulatory texts are clear and supported by an interpretative usage that remained unchanged for two decades” [our translation]. Justice Yergeau further stated that it is up to the Quebec legislator to lead the way if it considers that the French face of Quebec suffers from a wave of English-language trade-marks in public signage and to impose, through legislation as needed, the solutions that it deems adequate. This choice belongs to the legislative function and not to the judiciary. The court also mentioned that nothing prevents businesses wishing to add French descriptors to their storefront signs in Quebec from doing so.
It is interesting to note that the court declined to address the issue of whether a common law trade-mark that is not registered could benefit from the trade-mark exception.