'Bowl-Mat' and 'Oh Daddy' are not recognized trademarks, says court

In Centre Sportif St-Eustache v Procureur Général du Québec (2009 QCCS 3307, July 21 2009), the Superior Court of Québec (Criminal Division) has held that the terms 'Bowl-Mat' and 'Oh Daddy' were not "recognized" trademarks and, therefore, did not fall within the exception set forth in Paragraph 25(4) of the Regulation on the Language of Commerce and Business.
Centre Sportif St-Eustache owns and operates a large sports centre in St-Eustache, Québec. Commercial enterprises within the centre were named Amusements Bowl-Mat, Restaurant Oh Daddy and Oyster Bar. Centre Sportif shortened the names to simply Bowl-Mat and Oh Daddy. Because these names are English names, Centre Sportif was charged with violating Articles 58 and 205 of the Charter of the French Language, which mandates the use of French in commercial advertising. Centre Sportif appealed.
There is an exception in the charter for "recognized" trademarks. Centre Sportif argued that the terms 'Oh Daddy' and 'Bowl-Mat' fell within this exception, set forth at Paragraph 25(4) of the regulation. However the procureur général referred to the Supreme Court case of Veuve Clicquot Ponsardin v Boutiques Cliquot ([2006] 1 SCR 824) and argued that the terms 'Bowl-Mat' and 'Oh Daddy' were not "recognized" trademarks.
Notwithstanding an abundance of evidence showing that Centre Sportif had advertised the terms 'Bowl-Mat' and 'Oh Daddy' over a period of time, the trial court held that according to the Trademarks Act, 'Oh Daddy' and 'Bowl-Mat' did not constitute “recognized” trademarks. Centre Sportif argued that the word 'bowling' is now an accepted word in the French language. However, the procureur général replied that even if that were the case, the word 'bowl' is not an accepted French word. It was not argued that the expression 'Oyster Bar' was a trademark and, therefore, no exception to the charter was available in respect of the use of these words. 
It is accepted that a sign does not have to be registered in order to be "recognized" as a trademark under the charter and thus fall within the exception of Paragraph 25(4). The burden of proof is on the defendant to establish that the phrase or name at issue functions as a trademark and is thus "recognized" as a trademark.
The trial court distinguished between a trademark and a trade name since the exception in the regulation applies only to trademarks. The court held that the distinction lies mainly in the fact that a trademark is associated with vendible commodities or services, while a trade name is applied to the goodwill of a business. The court held that Centre Sportif's use of the phrases were trade name use and not trademark use.
The court also held that if the trade names of Centre Sportif were also trademarks, the entire registered names Amusements Bowl-Mat and Restaurant Oh Daddy (and not simply the short forms 'Bowl-Mat' and 'Oh Daddy') would fall within the exception. However, the entire names were not the phrases in question.
Centre Sportif pleaded that it was following the teachings of the Supreme Court in Veuve Clicquot Ponsardin. In the present case, the court distinguished Veuve Clicquot Ponsardin, stating that:

  • it was a case involving confusion; and
  • while the factors described therein were relevant to resolve such an action, they were of no relevance to determine whether one is dealing with a "recognized" trademark which may fall within the exception of Paragraph 25(4).  
On appeal, notwithstanding an abundance of evidence in the form of advertising for the shortened phrases 'Bowl-Mat' and 'Oh Daddy', the Québec Superior Court dismissed the argument that the words fell within the trademark exception of the charter. Centre Sportif was thus found to be in breach.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

Unlock unlimited access to all WTR content