On April 9, 2014, the Quebec Superior Court ruled that businesses in the province of Quebec may continue to display their trademarks on public signs outside their premises in a language other than French if no French version of the trademark has been registered.
Facts of the case
On November 13, 2011, during an enforcement campaign called “Une marque de respect de la loi” (A sign of respect for the law), the Office québécois de la langue française (OQLF) took the position that the trademark exception found in the Charter of the French Language (loi 101) does not allow businesses to display English trademarks outside their premises, or in most other places, unless the trademark is accompanied by a French generic descriptor, such as “magasin,” “boutique” or “café.” For example, the office suggested a store like Wal-Mart call itself “Le Magasin Wal-Mart” in Quebec.
It is important to note that many English retailers have complied with the above interpretation or gone further and created French versions of their trademarks. For instance, in Quebec Starbucks Coffee is known as Café Starbucks Coffee, Second Cup is Les cafés Second Cup and Kentucky Fried Chicken is Poulet Frit Kentucky.
During the campaign, the OQLF ordered several multinationals including Best Buy, Costco, Gap, Old Navy, Guess, Wal-Mart, Toys “R” Us and Curves International to change their signs to either give themselves a generic French name or add a slogan or explanation in French that reflects what they sell, otherwise they would risk running afoul of the rules governing the language of business in the province. The office also threatened to revoke government “francization certificates” which establish companies are in compliance with language rules.
Instead of abiding by the OQLF orders, these companies took the province of Quebec to court seeking a definitive legal opinion on whether the trademark exception allows them to display their trademarks on their premises unaccompanied by a French descriptor.
The multinationals argued that loi 101 does not apply to registered trademark names and they complied with the law as it is written. They suggested the OQLF was incorrectly interpreting that section of la loi 101.
The trademark exception is found in section 25(4) of the Regulation Respecting the Language of Commerce and Business of la loi 101 for public signs and posters and commercial advertising.
25. On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:
(1) the firm name of a firm established exclusively outside Québec;
(2) a name of origin, the denomination of an exotic product or foreign specialty, a heraldic motto or any other non-commercial motto;
(3) a place name designating a place situated outside Québec or a place name in such other language as officialized by the Commission de toponymie du Québec, a family name, a given name or the name of a personality or character or a distinctive name of a cultural nature; and
(4) a recognized trade mark within the meaning of the Trade Marks Act (R.S.C. 1985, c. T-13), unless a French version has been registered.
O.C. 1756-93, s. 25.
In other words, provided that a company has not registered a French version of its trademarks, the company may use registered trademarks in a language other than French on signs outside their premises in Quebec without the need of adding French descriptions.
The OQLF contended that a trademark displayed on business premises is used as a business name and should therefore comply with the rule governing names. That rule requires that a French generic term be added to any expression in another language.
The court agreed with the businesses and rejected the OQLF’s integration of trademarks into business names.
Justice Michel Yergeau stated:
Public signage by the plaintiffs of their trademarks uniquely in a language other than French, when there is no French version of the trademark, does not violate the Charter of the French Language or the laws respecting the language of commerce and business.
The fact that the OQLF had granted or renewed “certificates of francization” for over a decade knowing full well that these plaintiffs were using their trademarks in a language other than French without the support of a French generic, illustrated that their use was in accordance with the text of the Charter and Regulations. If the OQLF wants to change this accepted business practice, they need to ask the government to change the law.
In addition, the judge ordered that the OQLF not suspend, revoke or refuse to renew certificates or attempt to impose any other sanction stemming from the trademarks.
The Quebec attorney-general has 30 days to file an appeal.
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