Important news for mark owners doing business in Quebec: appeal dismissed on signage issue
On April 27 2015 the Quebec Court of Appeal dismissed - from the bench - the Quebec government’s appeal against a lower court decision that rejected the position taken by the Office québécois de la langue française (OQLF) on non-French public signage.
In April of last year, the Quebec Superior Court decided that non-French trademarks on store-front signage do not need to be accompanied by a French descriptor of the nature of the business to comply with Quebec’s Charter of the French Language. The decision was the result of an action launched in 2012 by several multinational retailers, including Best Buy, Gap, Old Navy, Wal-Mart and Costco, seeking a declaratory judgment against the interpretation of the OQLF, represented by Quebec’s Procureur general, that the display of a trademark on store-front signage is use of a trade name, which according to the charter and its regulations, requires the addition of a French descriptor if the name is not in French, irrespective of whether it is a trademark or not. The court had rejected the OQLF’s interpretation after a careful review of the context, history and intent of the charter and its regulations, and further held that trademarks and trade names are different.
The appeal was heard on April 27 2015, and a decision was immediately rendered from the bench dismissing the appeal, without having to hear from the retailers or the interveners, including the International Trademark Association. A written decision has since been issued, currently in French only: Québec (Procureure générale) c Magasins Best Buy ltée (2015 QCCA 747). In brief, the Court of Appeal analysed the relevant sections of the charter and its regulations, and concluded that non-French trademarks on public signage can be used without a French descriptor of the nature of the business, in accordance with the trademark exception under the charter, unless a French version of the mark is registered, in which case, the French mark must be used.
The Quebec government may seek leave to appeal to the Supreme Court of Canada. It may also seek legislative amendments to the charter and its regulations since the current version does not leave room for the office’s requirement of a French descriptor to non-French trademarks on public signage. However, for the moment, those doing business in Quebec and relying on the trademark exception to display non-French trademarks on their storefront signage would appear to be in compliance with the charter and may continue to do so without a French descriptor of the nature of their business.
Brigitte Chan and François Larose, Bereskin & Parr LLP, Montréal
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