Québec Appeals The French Charter Decision On Public Display Of Trade-Marks

The Attorney General of Québec, who represents the Office québécois de la langue française ("OQLF"), has filed a Notice of Appeal from the decision of the Québec Superior Court issued on April 9, 2014 by which the Court confirmed that businesses can continue using their registered trade-marks on public signs outside their premises in the Province of Québec without the need to add French generic language.

This decision was the result of proceedings for declaratory judgment initiated in October 2012 by several well-known retailers (Best Buy, Costco, Gap, Old Navy, Guess, Walmart, Toys "R" Us and Curves) following a change in the OQLF's interpretation of Québec's Charter of the French language (the "French Charter"). The International Trademark Association (represented by Smart & Biggar) also successfully intervened in this matter to raise important trade-mark law issues and policies.

At issue in these proceedings was the so-called trade-mark exception provided for in the French Charter Regulation which had allowed businesses, for almost two decades, to display their registered trade-marks on public signs in a language other than French without the need to add French generic language. However, the OQLF recently changed its position and has since then considered that any trade-mark appearing on a public sign in Québec is in fact used as a trade name, which requires its translation into French or the addition of French generic language.

As previously reported in our April 10, 2014 IP Update, the Québec Superior Court rejected all the arguments put forward by the OQLF, holding that the French Charter and its Regulation could hardly be clearer and that there was no doubt as to its proper interpretation.

In its Notice of Appeal, the OQLF is alleging three different grounds of appeal, namely:

1. The judge erred in his decision by equating "nom" ("firm name" in the English version) in the French Charter and its Regulation to the notion of "raison sociale" or corporate name. The OQLF is arguing that this interpretation is too narrow, and that "nom" should be understood as any trade name under which a business is operating.
2. The judge erred in not concluding that trade-marks displayed by retailers on public signs outside their premises are in fact used as trade names to distinguish their business (as opposed to their services) from that of others. The OQLF suggests that, in this context, trade-marks displayed by retailers are "trade-mark names".
3. The judge erred in not finding that the trade-mark exception (which would only mean that a recognized trade-mark does not need to be translated into French) and the need to protect a trade-mark's integrity are not incompatible with the rules in the French Charter for corporate names and trade names which require the addition of French generic language.

It can be expected that, once again, retailers will be vigorously defending their right to use and maintain the integrity of their trade-marks as provided for in the French Charter, the Trade-marks Act and international instruments.

Unless the parties request and/or the Court orders that this matter be fast-tracked, this appeal will most likely not be heard before the end of 2015.

For further information, please contact a member of our firm's Trade-marks group.

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