A unanimous decision of the Quebec Court of Appeal has confirmed that businesses are under no obligation to add a French-language description to their trade-marks displayed exclusively in a language other than French on public signs and posters and in commercial advertising in Quebec (so long as no French version of the mark is registered). This highly publicized case, which we have been following closely,  was commenced by a group of eight multinational retailers in response to warnings issued by the Office québécois de la langue française (the “OQLF”) claiming that the retailers' storefront signage violated the province's language laws.
Under the Charter of the French language (the “Quebec Charter”), public signs/posters and commercial advertising must be exclusively in French or have French displayed as the markedly predominant language. However, there is a statutory exception that allows recognized trade-marks to appear exclusively in a language other than French, if no French version of the trade-mark has been registered. For many years, retailers operating in Quebec have displayed their trade-marked company names in English only on their storefront signs, e.g. BEST BUY, BANANA REPUBLIC, and COSTCO WHOLESALE, believing that such displays qualified for the trade-marks exception. Then, in 2011, the OQLF launched a campaign to increase the visibility of the French language in the province and took the position that the trade-marks exemption does not apply to trade-marked company names displayed on storefront signage, because those marks are being used as business names and not as trade-marks. According to the OQLF, retailers must therefore add a French-language generic descriptor to their names that describes the nature of their business' activities (e.g. DAILY LIVINGTM – Meubles, Literie et decoration).
Several major retailers applied to court to find out if their current signage was in compliance. The Superior Court of Quebec held in favour of the retailers, declaring that their public display of trade-marks in English only did not contravene the Quebec Charter. The OQLF, represented by the Attorney General of Quebec, appealed.
The Court of Appeal affirmed the 2014 declaration of the Superior Court of Quebec, holding that a business can display a trade-mark exclusively in a language other than French on public signs and in commercial advertising, even if that trade-mark is also the company's name (and provided that no French equivalent has been registered). The Court of Appeal recognized the importance of protecting the French language in Quebec as the underlying purpose of the Quebec Charter but pointed out that certain carve-outs were made in the Quebec Charter to comply with limits imposed by the Canadian Constitution, particularly with respect to the division of government powers and the freedom of expression. One of the carve-outs allows companies to use non-French trade-marks if a French-language equivalent has not been registered. The Court of Appeal found that the retailers' use of English-language trade-marks on their storefront signage fell within this exemption.
The Attorney General argued that the exemption was more restrictive than it appeared to be in light of other provisions that prohibit the exclusive display of non-French business names. Therefore, the Attorney General asserted, an exclusively non-French trade-mark could not be displayed in a manner that was akin to the use of a business name (e.g., as on storefront signs). The Court of Appeal disagreed, stating that this interpretation contradicted the plain language of the law, which allowed for the exclusive use of a language other than French and encompassed the display of trade-marks as company names. The Court of Appeal furthermore pointed out that its decision aligned with the OQLF’s historical practice over several years and that the OQLF’s recent statements, setting out its new position, did not reflect the laws in Quebec. The Court of Appeal dismissed the appeal and concluded that an exclusively non-French trade-mark can be displayed as a company name without the addition of a French-language descriptor.
The Attorney General has 60 days from the date of the judgment to seek permission to appeal to the Supreme Court of Canada. The Court of Appeal’s decision will only be final after it is upheld by the Supreme Court of Canada or after the deadline for appeal has expired and no appeal has been filed. The Attorney General has not yet indicated whether it intends to seek leave, but we will keep you apprised.