Asia IP

The freedom to use a trademark in a language other than French has recently been confirmed. This may sound obvious for non-Canadians, but the bilingual character of Canada and more particularly the laws of the province of Québec were interpreted by an official body to limit this freedom. Here is a summary of the so-called Best Buy case.

Background

In Canada, both French and English are official languages. In the 1970s, the Government of the province of Québec promulgated an act called the Charter of the French Language aimed to promote and protect the French language in its territory. This act also created an oversight body called l’Office Québecois de la Langue Française (OQLF) to act as a watchdog of the use of the French language and to enforce the Charter.

The Charter provides that French is the only language to be used in public signs and commercial advertising, or that it be markedly predominant if another language is used. However, the Regulation respecting the language of commerce and business,, one of the regulations enacted pursuant to the Charter, provides that if a trademark in a language other than French is used and that no French version of that trademark is registered, then said “non-French” trademark can be used alone. Where it gets more complicated is when we take into consideration that the Charter also provides that the name of an enterprise must be in French. In other words, when a company is registered to do business in Québec, it must have a French version of its name or add some generic wording in French (example: “Les Magasins Toy inc”. instead of “Toy inc”.)

The Best Buy case was triggered after several retailers received cease and desist letters from the OQLF and notices that their good standing or “francization” certificates could be revoked because their signage, which displayed their trademark, were only in English. In response, several trademark owners (including Best Buy, Costco Wholesale Canada, Old Navy (Canada), Wal-Mart Canada and others) petitioned the Superior Court for a declaratory judgment confirming the validity of their interpretation of 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 the Charter and 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 the Charter, which requires that the name of an enterprise must be in French.

The Court’s Ruling

The Court upheld the retailers’ position and ruled that the terms “name of an enterprise” and “name” as used in the Charter refer to the trade names and do not include trademarks.

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 and various international treaties, which have no connection to firm names, which fall under provincial legislation.

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. In the past, the OQLF had tolerated the display of trademarks in a language other than French without the addition of a generic French descriptor. 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 provided that no French version of the trademark has been registered. Thus, the applicable legislation remains unchanged.

Fasken Martineau DuMoulin

S.E.N.C.R.L., s.r.l.

800 Place Victoria, Bureau 3700

Montréal, Québec H4Z 1E9

Canada

T: +1 514.397.5111

F: +1 514.397.7600

E: helayoubi@fasken.com

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About the Author

Hilal El Ayoubi is a partner at Fasken Martineau in Montréal, where he practices in intellectual property, information technology, life sciences and competition law. He advises clients on commercial transactions, mergers and acquisitions, joint ventures, licencing contracts and agreements respecting the transfer of intellectual property rights.

Patricia Seguin is a partner at Fasken Martineau in Montréal, where she manages the firm’s trademark team. She has been managing large national and international trademark portfolios for more than 25 years.

Amélie Béliveau, an associate at Fasken Martineau in Montréal, joined the firm as a student in 2011. While in law school at the Université de Montréal, she articled with a judge from the Québec Court of Appeal.