Doing Business in Quebec: Does the Charter of the French Language Prevent the Use of Trade-Marks in Languages other than French in Signs, Posters and Advertising?

Doing business in Quebec requires that enterprises pay particular attention to the requirements set out in the Charter of the French Language, R.S.Q., c. C-11 (commonly known as “Bill 101”, hereinafter referred to as the “Charter”), a statute adopted in 1977 with the purpose of enhancing the status of the French language in Quebec, in response to what was held to be a pressing and substantial concern — the survival of the French language. Contravention to the provisions of the Charter can expose one to penal proceedings and hefty fines (up to 40,000$, plus accounting for profits), amongst other sanctions. It is therefore of utmost importance for all to be aware of their rights and obligations under this piece of legislation, with the provisions regarding the use of trade-marks being of particular interest. In this context, the decision rendered by the Superior Court of Quebec on April 9, 2014 in Magasins Best Buy Ltée v. Procureur général du Québec, 2014 QCCS 1427 is an extremely important one. There, the Court declared that the Charter and the regulations adopted thereunder do not require businesses to add generic French terms to trade-marks registered under the Trade-Marks Act, R.S.C. 1985, c. T-13 which are used in public signs, posters and advertising – including storefronts –, even though these trade-marks are exclusively in a language other than French, when a French version of the trade-mark has not been registered.

Signs, Posters, and Advertising under the Charter of the French Language

Amongst other obligations, the Charter provides that the name of an enterprise must be in French and that public signs, posters and advertising must be in French. Enterprises may also use a name in another language, as long as the French name appears at least as prominently. They may have signs, posters and commercial advertising in French and another language, as long as French is markedly predominant.

Exceptions to these rules can be determined by regulation adopted by the Government. Such exceptions are provided for, namely, at articles 25 and 27 of the Regulation Respecting the Language of Commerce and Business, R.S.Q. c. C-11, r. 9 (the “Regulation”), which read as follows:

“25.  On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:

[…]

(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.

27.  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.”

Debates as to the Application of the Charter of the French Language

The constitutionality of certain provisions of the Charter have been challenged on a number of occasions, including in the seminal case of Ford v. Quebec (Attorney General), [1988] 2 SCR 712, where the provision of the Charter requiring that public signs, commercial advertising and firm name should be in French only was struck down. As a result of that ruling, and others, many legislative changes were made to the Charter over time.

The Charter has also been at the center of its share of societal debates, including the recent Pastagate, which has been discussed Canada-wide.

Where trade-marks are concerned, until 2008, the Office québécois de la langue française (“OQLF”) – the Office responsible for defining and conducting Québec policy on linguistic officialization, terminology and the francization of the civil administration and enterprises, as well as ensuring compliance with the Charter – had accepted commercial displays using trade-marks which are exclusively in languages other than French, considering articles 25 and 27 of the Regulation cited above.

However, on November 13, 2011, the OQLF began an awareness campaign entitled “A trademark to respect the law”, stating that the use of trade-marks in languages other than French was a violation of the Charter, and encouraging enterprises to “conform to their obligations” under the Charter, namely by adding French generic terms to trade-marks being used as a commercial name in public displays. This campaign was said to be aimed at preserving the French “linguistic landscape” of Quebec. A website entitled www.respectdelaloi.gouv.qc.ca (“www.respectthelaw.gouv.qc.ca”) was even been set-up by the OQLF at the time (this website is no longer available).

In essence, from this point on, the OQLF ‘s position was that using a trade-mark on a storefront or other public displays is ipso facto equivalent to using it as a commercial name. Since the law requires that commercial names in languages other than French be acompanied by French generic terms, the OQLF required that enterprises add generic French terms to their trade-marks in languages other than French when using them in public signs, posters and advertising.

Anticipating the effects this change in position would have on their trade-marks, the business community attempted to convince the OQLF that the current practice of retailers was permitted under the Charter, contrary to the message sent though the awareness campaign. Unfortunately, the OQLF could not be convinced.

Instead, following the 2011 campaign, a number of retailers were officially put on notice by the OQLF that penal proceedings would be instituted if these retailers did not add a generic term in the French language when using their English language trade-marks in public signs, posters and advertising, including on their storefronts. Some of these retailers were also warned that their certificates of francization may be suspended if they did not comply with the OQLF’s demand.

This is the situation that brought a group of eight (8) retailers to seek a declaratory judgment in the case of Magasins Best Buy Ltée v. Procureur général du Québec, whereby the Court would determine that there was no obligation under the Charter to add generic French terms to registered trade-marks which are exclusively in another language, when a French version of the trade-mark has not been registered, and hold that the OQLF could not sanction the Plaintiffs in any way, including by suspending, revoking or refusing to renew their francization certificates, for the simple fact that they use a trade-mark exclusively in a language other than French in their signs, posters and advertising, when no French version of the trade-mark has been registered.

After the proceedings were instituted, six (6) out of eight (8) of the Plaintiffs received a statement of offence commencing penal proceedings for having violated the Charter.

In its decision, favourable in every respect to the position of the Plaintiff retailers, the Court comes to the conclusion that trade-marks and commercial names are two different juridical notions, which cannot be viewed as synonyms (as the attorney general was suggesting, in conformity with recent OQLF interpretation of the Charter) without taking away the effect of the express derogation contained at articles 25 and 27 of the Regulation. The Court also notes that whether this derogation should continue to exist is not for tribunals to decide in a “magical judgment”. This must be left up to the legislator.

Along the way, the Court makes very useful observations in its interpretation of the Charter and the Regulation, the most important of which can be summarized as follows.

Trademarks

Trade-marks are governed by the Trade-Marks Act, R.S.C. 1985, c. T-13, under federal jurisdiction. They are also subject to various international conventions.

The legal purpose of trade‑marks is their use by their owner or licensee “to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”. A mark is a guarantee of origin and inferentially, an assurance to the consumer that the quality will be what he or she has come to expect.

The integrity of a trade-mark is carefully protected by owners and users of the mark wolrdwide in order to safeguard its usage across all borders. Requesting that alterations be made to a trade-mark, in order to include additional words such as generic terms in the language of a particular country or province, or requiring a translation of the trade-mark in this language, would likely not be not welcomed options. This would disrupt the normal order of international trade-mark protection, seeing that uses of a trade-mark that are substantially different than the original are not generally protected under trade-mark law.

Past Administrative Practice and Interpretation

The Court takes ample consideration of the fact that, in 2000, the Conseil supérieur de la langue française – whose mission is to advise the Minister responsible for the administration of the Charter on matters relating to the French language in Québec – took the above principles into consideration, amongst others, and advised the minister in charge of the Charter that it would not recommend amending the Charter to modify the exceptions provided at articles 25 and 27 of the Regulation. Instead, it would recommend that the Quebec Government should enter into negotiations with international organizations to raise awareness as to linguistic issues in trade-mark law.

In fact, articles 25 and 27 of the Regulation have existed and remained in their current form for close to 20 years. During this time, the OQLF has consistently awarded and renewed the francization certificates held by the Plaintiffs, despite the fact that they have consistently been displaying their trade-marks without generic French terms.

The administration has therefore consistently interpreted the law in the way that Plaintiffs propose for close to 20 years. This confirms that the proper interpretation of the Charter and the Regulation is the one advanced by Plaintiffs.

Trademarks Are Not Commercial Names

Most of the trade-marks at issue in this case are used by persons other than the owners of these trade-marks, usually franchisees. The fact that more than one person can display the same trade-mark shows that this cannot be tantamount to displaying a commercial name, since Quebec law prohibits enterprises from using commercial names that creates confusion with another legal person.

Use of trade-marks in that context is not related to the legal personality of their users.

The Wording of the Statute and the Regulations

The Court notes that trade-marks occupy a very specific niche at article 25(4) of the Regulation, in derogation of the other provisions of the Charter. This derogation is not accompanied by any exception regarding trade-marks being used as a commercial name, and does not make a distinction based on the language of the words forming the trade-mark.

A law which is clear should not be interpreted. The concepts of a “trade-mark” and a “commercial name” cannot be presumed to be synonyms through interpretation. Acquiescing to such a proprosition would create a legislative redundancy, contrary to the principle that laws should be presumed to have effect.

Considering the above, the Court finds as follows:

“[132] Essentially, article 58 of the Charter gives the Government the power to adopt regulations governing derogations to the French-display rule and the Regulation creates such a derogation, distinct and specific, for trade-marks drafted exclusively in English. It is hard to be any clearer.

[…]

[209] The Court comes to the conclusion that it with full knowledge and being fully informed of the particular rules governing trade-marks that the Government introduced a specific derogation to the French-display rule to allow the public display of trade-marks in a language other than French and maintained it since then without modifications.”

[Our translation.]

Invitation to Retailers

Although the Court’s conclusions are entirely favourable to the Plaintiff retailers, the Court does note that current practice in the industry not to register trade-marks in French is clearly aimed at allowing retailers to avail themselves of the derogation provided under the Regulation, and states that “nothing prevents enterprises who wish to do so to add generic French terms to their trade-marks or assort them with French slogans, as others have done on a voluntary basis, thereby contributing to safeguard the French linguistic landscape of Quebec” [our translation].

Scope and Limits of the Decision

The scope of the decision is clearly set out by the Court.

First, the decision does not purport to decide whether trade-marks should be translated in French.

Whether the Quebec legislature would have jurisdiction to enact legislation affecting the use or registration of trade-marks is a matter that is not discussed in the decision. This is sure to prompt lengthy debates, in another time and place. The fact that the Conseil supérieur de la langue française had previously noted, in 2000, that it did not believe that it was its place to unilaterally put into question an international set of rules which dates back more than a century would certainly pose an obstacle to such a project.

Secondly, it is important to note that the trade-marks at issue in this case were all registered trade-marks. Considering this, the Court expressly stated that it would not opine as to what the outcome of the case would have been if the trade-marks in question were not registered. This, again, could prompt lenghty debates, in another time and place.

Other Relevant Publications

Those interested in learning more about the obligations stemming from the Charter of the French Language may also be interested in consulting a previous McCarthy Tétrault publication entitled “The Usage of French in Enterprises: Bill 14[1].

The decision rendered in Magasins Best Buy Ltée v. Procureur général du Québec is also discussed on McCarthy Tétrault’s snIP/Its Blog.

We will of course keep our readers advised of relevant developments with regards to the application of the Quebec Charter of the French Language as they occur. Stay posted!


[1]       N.B. Bill 14, which is incidentally discussed in that publication, was adopted in principle, but has not been sanctioned as of today.

Bill 101 Charter of the French Language Ford v. Quebec Office québécois de la langue française Pastagate regulation Regulation Respecting the Language of Commerce and Business The Usage of French in Enterprises: Bill 14 Trade Marks Act

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