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A Defeat for the Office québécois de la langue française: a trade-mark may be posted in English only

BLG - Borden Ladner Gervais

On April 9, Mr. Justice Yergeau of the Superior Court of Québec rendered a significant decision on the motion for declaratory judgment instituted by eight multinational corporations, namely, Best Buy, Costco, Gap, Old Navy, Wal-Mart, Toys "R" Us, Guess? and Curves.

The motion was filed after the Office québécois de la langue française (the "Office") pressured these companies and several others located in the province of Québec, to add a descriptive term in French to their trade-marks displayed in English-only on the signs posted in front of their premises.

The Charter of the French Language (the "Charter") provides that public signs and posters in Québec must be displayed in French only or also in French and another language, provided that the French text appears as markedly predominant. An exception to this rule is found in the Regulation respecting the language of commerce and business (the "Regulation"), which provides that a trade-mark may appear on a public sign exclusively in a language other than French, unless a French version of the mark has been registered with the Canadian Intellectual Property Office (the "CIPO"). Section 25 of the Regulation is therefore intended to allow an exception to the general rule.

For nearly two decades, the Office had not required the addition of any French generic term to English-only trade-marks displayed on the front of business premises. Almost four years ago, the Office changed its interpretation of the exception contained in the Regulation, assimilating the use of a trade-mark on a sign outside business premises as the use of the company’s name. Under the Charter, such an interpretation requires the addition of a descriptive term in French where the company name is in a language other than French. The judge did not accept the foregoing proposition, which was put forth by the Attorney General, since doing so would have the consequence of making company names synonymous with trade-marks, whereas they are separate concepts in law.

In this regard, the evidence adduced showed that the trade-marks of most of the petitioners did not correspond to their company names. Consequently, the use of a trade-mark on the front of business premises did not constitute the display of the company name. The evidence indicated that serious consideration had been given to the possibility of requiring the addition of a generic term to non-French trade-marks before the proposal was abandoned.

The judge held that the Charter and the Regulation are clear in allowing a trade-mark to be displayed in a language other than French, without the addition of a French generic term, provided that no French version of the mark is registered. This interpretation of the Charter and the Regulation had been applied by the Office for years. The judge concluded that only an amendment to the Regulation could make the addition of a generic term to English-only trade-marks compulsory.

It is important to specify that this judgment deals exclusively with the display of trade-marks duly registered with the CIPO and does not apply to the display of English-only trade-marks that are not registered.

It remains to be seen whether this decision will be final or whether it will be appealed within the 30-day deadline. A change of government occurred two days before the decision was rendered and so this matter will be the first test the new Liberal government will have to meet.