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Sign Language: Court Clarifies that Under the French Language Charter, a Trademark does not Equal a Trade-Name

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Intellectual Property Bulletin

Legal action was triggered after several retailers received cease and desist letters from the Office québécois de la langue française (OQLF) and notices that their good standing or "francization" certificates could be revoked. In response, several trademark owners[1] petitioned the Superior Court for a declaratory judgment confirming the validity of their interpretation of the Charter of the French Language[2] (the "Charter") and the Regulation respecting the language of commerce and business[3] (the "Regulation").

The OQLF had admonished the retailers for displaying trademarks in a language other than French on their storefront signs without the addition of a French descriptor, meaning that the signage was exclusively in a language other than French. The retailers holding the trademarks in question believed their signage to be in keeping with the Charter and the Regulation.

The OQLF's Position

The OQLF claimed that using a trademark on storefront signage should be regarded as displaying a firm name and, pursuant to section 27 of the Regulation, must therefore be accompanied by a generic term in the French language. According to the OQLF, when a firm publicly displays its trademark on its storefront, it is in effect displaying its name, hence the obligation to add a generic French descriptor in order to meet the requirements of section 63 of the Charter, which requires that the name of an enterprise must be in French.

The Trademark Holders' Position

The trademark holders' claim was simple and concise. They argued that the Charter and the Regulation allow for public signage in a language other than French when such signage is a recognised trade mark in a language other than French where no French version has been registered.

The Court's Ruling

The Court upheld the retailers' position and ruled that the terms "name of an enterprise" and "name" as used in sections 58 and 68 of the Charter refer to names of an enterprise within the meaning of the Act Respecting the Legal Publicity of Enterprises[4] and do not include trademarks. Accordingly, the Court pointed out the distinction to be made between trademarks and trade-names. For example, the trademark "Curves" is used by a variety of franchises, among them 9226-9794 Québec Inc.. This company's trade-name is therefore 9226-9794 Québec Inc., while "Curves" is its trademark.

The Court held that a firm name or trade-name is a distinct legal concept from that of the trademark and is therefore subject to a different set of rules. Keep in mind that trademarks fall under federal jurisdiction and are governed by the Trade-marks Act[5] and various international treaties, which have no connection to firm names, which fall under provincial legislation.

All the companies involved in this case hold registered trademarks for which no French version has been registered. This is therefore not a case of companies using unregistered trademarks in their signage.

The Court also referred to the supranational framework surrounding trademarks and the duty of the states that signed the relevant international treaties to uphold the integrity of trademarks. In this regard, the Court pointed to an opinion issued by the Conseil de la langue française (the "Council") in August 2000. The minister responsible for the Charter had asked the Council to examine the issue of displaying business names in Quebec and the aspect of trademarks in particular. In its opinion, the Council referred to the fact that international legal protection of trademarks applies regardless of language. The Council was consequently of the opinion that there was no grounds to amend the Charter or the Regulation to alter the trademark regime.

The Court also based its decision on the OQLF's own interpretation of the Charter and the Regulation over the years. It showed evidence that, for twenty some years, the OQLF had tolerated the display of trademarks in a language other than French without the addition of a generic French descriptor, and had considered such signage to be compliant with the Charter. It was only in 2010 that the OQLF began requiring public display of trademarks in a language other than French to be accompanied by a French generic.

The Court held that displaying a trademark in a language other than French is permitted in public signs and posters and commercial advertising, and specifically on retail storefront signs, provided that no French version of the trademark has been registered. Thus, the applicable legislation remains unchanged. Signage in languages other than French is legal for trademarks registered with the Canadian Intellectual Property Office for which no French version has been registered.

[1] Best Buy Ltd.; Costco Wholesale Canada Ltd.; GAP (Canada) Inc.; Old Navy (Canada) Inc.; Guess? Corporation  Canada; Wal-Mart Canada; Toys "R" Us Canada Ltd.; Curves International Ltd.

[2] CQLR c C-11

[3] CQLR c C-11, r 9

[4] CQLR c P-44.1

[5] RSC 1985, c T-13

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