Jessica Harding, Alexandre Fallon
Apr 11, 2014
In reasons released on April 9, 2014,1 Justice Yergeau of the Superior Court of Québec held that the Québec Charter of the French Language (Charter) does not require that public signs and commercial advertising containing a non-French trade-mark be accompanied by a generic term in French, contrary to what was recently being asserted by the Office québécois de la langue française (OQLF), the regulator charged with enforcement of the Charter.
Enacted in 1977, the Charter requires as a general rule that public signs and commercial advertisements, as well as “firm names,” be in French.
Indeed, section 58 of the Charter provides that all public signs, posters and commercial advertising must be in French or in both French and another language provided that French is markedly predominant. This section also enables the government to establish exceptions to this general rule, which are set out in the Regulation respecting the language of commerce and business (the Regulation).2
One of these exceptions, in subsection 25(4) of the Regulation, concerns recognized trade-marks for which no French version has been registered. Under this section, such trade-marks may appear exclusively in a language other than French on public signs and posters and in commercial advertising.
A number of retailers have therefore been using their English language trade-marks in their public signs and commercial advertising in Québec for many years without objection from the OQLF.
However, in 2009, the OQLF decided to revisit its interpretation of the applicable rules, invoking section 27 of the Regulation, which provides that “an expression taken from a language other than French may appear in a firm name to specify it provided that the expression is used with a generic term in the French language.”
In 2011, several retailers received a notice from the OQLF requiring that a generic term in the French language accompany their trade-mark on their public signs, posters and commercial advertising. In response, eight retailers petitioned the Superior Court for a declaratory judgment confirming that their public signs and advertising complied with the Charter and the Regulation and that the addition of a generic term in the French language was not required.
Before the Court, the Attorney General of Québec argued that when a retailer is publicly displaying its trade-mark, it is in fact displaying its name. Section 63 of the Charter requires that the name of an enterprise be in French, and the only exception to this requirement is section 27 of the Regulation, which allows for a non-French expression to appear in a firm name provided it is accompanied by a generic term in the French language. Therefore, displaying the name of a retailer on public signs or commercial advertising requires the addition of a generic term in the French language if the name is not French, even if it constitutes a recognized trade-mark.
The Court disagreed with the Attorney General, holding that the name of an enterprise is a distinct legal concept from that of the trade-mark used by an enterprise in its public signs and commercial advertising. The Court concluded that section 27 of the Regulation is not a rule of general application and does not apply to the use of recognized trade-marks in public signs and commercial advertising.
Businesses operating in Québec do not, therefore, have to add a generic French term to their public signs and commercial advertising when using a non-French recognized trade-mark, provided that they have not registered a French version of said trade-mark.
1 Magasins Best Buy Ltée c Québec (PG) (April 9, 2014), Montreal, 500-17-074083-125 (Sup. Ct.).
2 CQLR c C-11, r 9.
Authored by Alexandre Fallon, Jessica Harding