This information bulletin addresses the language requirements pertaining to display, in a language other than French, of trademarks on real estate in Quebec.
Companies doing business in Quebec can no longer physically display their trademark on real estate only in a language other than French.
There are specific legal requirements set in regulation in order to ensure a sufficient presence of French in case of such physical display of a trademark in another language.
This change to the regulations under the Charter of the French language does not affect other uses of trademarks on websites or promotional materials, etc.
The new legal requirements related to the physical display of trademarks on real estate entered into force on November 24, 2016 and they had immediate effect for any new physical display. As for the trademarks that were already physically displayed prior to that date, the time limit to comply with the said legal requirements is November 24, 2019.
Since 2010, the Office québécois de la langue française (the “OQLF”) has adopted the position that trademarks displayed in a language other than French must be accompanied by generic terms in French. However, in 2014, the Superior Court of Quebec determined that the use of such generic terms is not mandatory. Moreover, in the appeal of that decision the following year (Magasins Best Buy Ltée v Quebec (Attorney General), 2015 QCCA 747) the Quebec Court of Appeal confirmed that trademarks can be displayed in a language other than French without any generic terms in French.
Nevertheless, those judgments were set aside in 2016 as the government adopted the position of the OQLF by amending the Regulation respecting the language of commerce and business (the “Regulation”) which relates to the Charter of the French Language. Under the amended Regulation, “where a trademark is displayed outside an immovable only in a language other than French […] a sufficient presence of French must also be ensured on the site.” It should be understood that the concept of immovable is the civil law equivalent of real estate.
The amended Regulation has immediate effect regarding any new physical display of trademarks on real estate after November 24, 2016. As for trademarks that were already physically displayed as of this date, companies doing business in Quebec have until November 24, 2019 in order to comply with the amended Regulation. Thus, this information bulletin provides an overview of the requirements to ensure compliance with the amended Regulation.
Scope of the amended Regulation
The amended Regulation applies to trademarks “displayed” either:
(1) outside an immovable, including on its roof;
(2) outside premises situated in a mall;
(3) inside an immovable or premises situated in a mall if the trademark is intended to be seen from the outside; or
(4) on a pole or column or other independent structure, but only if there is no other outside sign or poster on which the trademark appears.
In order to comply with the amended Regulation, a sufficient presence of French must be ensured whenever a trademark is displayed on real estate in another language. The presence of French refers to a sign or poster with:
(1) a generic term or a description of the products or services;
(2) a slogan; or
(3) any other term or indication, favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site.
The presence of French is deemed sufficient if it is given permanent visibility, similar to that of the trademark displayed and if it is legible in the same visual field as that mainly covered by the trademark signs or posters. When determining whether the presence of French is sufficient, generally no credit should be given to the display in French of (1) business hours, (2) numbers and percentages, (3) definite articles such as “the” (e.g. le, la, les), indefinite articles such as “one” (e.g. un, une, des) and partitive articles such as “of” (e.g. du, de , d’, de la, de l’, des) or (4) a term or an expression in French that is written so small that it is necessary to be within 1 meter of it in order to be able to read it.
By Mark Potechin and Petar Stoyanov, DLA Piper