On April 9, just two days after the provincial election in Quebec, Justice Yergeau of the Quebec Superior Court delivered a decision (http://canlii.ca/t/g6h3w) on the motion for a declaratory judgment instituted by eight multinational corporations, namely, Best Buy, Costco, Gap, Old Navy, Wal-Mart, Toys “R” Us, Guess, and Curves.
It remains to be seen whether the decision will be final or whether it will be appealed within the 30-day deadline.
“We do not know if an appeal will be filed especially since a new government was elected last week,” says Genevieve Bergeron, partner with Borden Ladner Gervais LLP in Montreal.
The motion was filed after the Office québécois de la langue française pressured the companies and several others located in Québec, to add a descriptive term in French to their trademarks displayed in English only on the fronts of their establishments.
The campaign was largely driven by the arrival of big box retailers in Quebec but would have applied to all businesses.
Bergeron explains that the Charter of the French Language provides that public posting in Québec be done in French only or also in another language, provided the French text appears as clearly predominant.
An exception to this rule is found in the Regulation respecting the language of commerce and business, which provides the public posting of a trademark may be done exclusively in a language other than French, unless a French version of the mark has been registered with the Canadian Intellectual Property Office. Section 25 of the regulation is therefore intended to allow an exception to the general principle requiring posting in French.
For nearly 20 years, the language office had not required the addition of any French generic to unilingual English trademarks displayed on the fronts of commercial establishments. Almost four years ago, in November 2011, it changed its interpretation of the exception contained in the regulation, assimilating the public posting of a trademark to its use as the name of the firm in question.
Under the Charter, such an interpretation requires the addition of a descriptive term in French where the company name is in a language other than French. The judge did not accept that allegation by the province’s attorney general, since doing so would have the consequence of making firm names synonymous with trademarks, whereas they are separate concepts.
The evidence showed the trademarks of most of the petitioners did not correspond to their corporate names. Consequently, the use of the trademark on the front of an establishment did not constitute the posting of the name of a firm. The evidence indicated that serious consideration had been given to the possibility of requiring the addition of a generic to non-French trademarks before the idea was abandoned.
The judge held that the language charter and the regulation are clear in allowing a trademark to be posted in a language other than French, without the addition of a French generic, provided that no registered version of the mark exists.
This construction of the charter and the regulation had been applied by the language office for years. The judge therefore concluded the only way to make the addition of a generic term to unilingual English trade-marks compulsory is to amend the regulation.
Bergeron notes it is important to specify that this judgment deals exclusively with the posting of trademarks registered with the CIPO and does not apply to the display of unregistered, unilingual English trademarks.