Use of English-only Trade-marks on store signs OK'd by Quebec Superior Court

Yury Smagorinsky and Catherine Jenner -

On April 9, 2014, the Quebec Superior Court issued its 55-page decision in Magasins Best Buy ltée c. Québec (Procureur general). The action had been initiated by certain major retailers including Wal-Mart, Best Buy, Guess, Gap, Old Navy, Guess, Walmart, Toys "R" Us and Curves against the Office québecois de la langue française (OQLF), the provincial Quebec government organization that is responsible for ensuring compliance with Quebec’s French language laws. The action sought to recognize the retailers’ right to display English-only trade-marks on public storefront signage in Quebec, a right the OQLF was contesting.

In Quebec, Bill 101, the Charter of the French Language (Charter), requires that the language on public signs be predominantly in French. Another rule in the Charter requires that businesses operating in Quebec use a French version of their firm name whenever the use of French is mandated. A firm name displayed on the sign may include words in a language other than French, provided that the non-French term(s) is accompanied by a generic French term. Examples of generic French terms used are "Magasin" (store) or "Restaurant". 

The Regulation Respecting the Language of Commerce and Business (the Regulation) under the Charter, provides an exception to the general signage rule for non-French trade-marks. Such trade-marks may appear exclusively in a language other than French (i.e. without a generic French term), provided that the mark is recognized as a trade-mark under the Canadian Trade-marks Act and a French version of the same mark has not been registered.

The OQLF had allowed businesses to display their non-French trade-marks for nearly two decades without opposition when, somewhat suddenly, the language enforcement body reversed its position, issuing a resolution in 2008 condemning the practice of registering English trade-marks with the CIPO, the Canadian Intellectual Property Office, suggesting that it was a way of circumventing the Charter’s provisions on public signs.  Then, in 2010, the OQLF began an active publicity campaign consisting of press releases, warnings and demand letters sent to the Plaintiff companies (among many others), in which it stated its position that an English-only trademark on a sign was a firm name use which required the addition of a generic French term.

In response to the OQLF’s new position, the Plaintiff companies instituted an action for a declaratory judgment in 2010, asking the Quebec Superior Court to declare that the usage of non-French trade-marks on public signage is a compliant usage which does not infringe the Charter or its Regulation. 

In his decision, Justice Yergeau ruled in favour of the Plaintiffs and held that the Charter and its Regulation did indeed allow the display of non-French trade-marks on public signs. The Court dismissed every argument put forward by the OQLF, holding that the Charter and its Regulation clearly provided an exception for trade-marks, and even created a "distinct niche" for them. 

The Court reasoned that a trade-mark is a distinct legal concept that differs markedly from firm names and trade names. The mere act of publicly displaying a non-French trade-mark outside of a business’ premises does not, in and of itself, convert the trade-mark usage into a firm name or trade name usage, that would require the addition of a generic French term (as is required under the Charter in respect of use of firm names). 

The Court also held that the OQLF’s past practice of tolerating the public display of non-French trade-marks and treating such display as compliant with the law (i) established an interpretive use over a sufficiently long period of time to give the Plaintiffs reason to believe that their practices complied with the law, and (ii) further confirmed the meaning of the clear language of the Charter and the Regulation.

In its concluding remarks, the Court noted that it was not the Court’s role to change the status quo with a declaratory judgment when the law clearly carved out a trade-mark exception to the general rule respecting the predominant use of French in public signs or the addition of a French generic term to an English firm name. Despite the inherent difficulties associated with trade-mark law, a matter of Canadian federal jurisdiction that it also subject to international treaties ratified by Canada, the Court stated that it is up to the Quebec government to amend Quebec’s language laws if it saw the proliferation of English trade-marks on public signs as a threat to the status of French in Quebec.

 On May 8, 2014, the OQLF appealed the Superior Court’s decision.

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