Québec Court of Appeal Affirms the Use of Recognized Non-French Trade-marks On Public Signs

The Québec Court of Appeal (Appeal Court) has upheld the decision of the Superior Court of Québec (Superior Court) that public signs bearing trade-marks in a language other than French do not need to be translated into French or accompanied by generic French language, as previously asserted by the Office québécois de la langue française (OQLF).

Section 58 of Québec’s Charter of the French Language (Charter) requires that public signs and commercial advertising must be in French. Subsection 25(4) of the Regulation respecting the language of commerce and business(Regulation) provides an exception for businesses to display recognized trade-marks on public signs and commercial advertising in a language other than French if there is no French version of the trade-mark.

For many years, the OQLF did not object to the display of English language trade-marks on public signs by retailers. However, in 2010 the OQLF altered this position and since then has considered the display of a trade-mark that is also a business name on public signs as the display of a business name. The OQLF asserted that, pursuant to section 27 of the Regulation, a business name may appear in a language other than French provided that it is accompanied by generic language in French (emphasis added). Retailers received notices from the OQLF requiring the addition of generic language in French.

In 2012, a group of retailers launched a lawsuit against the Province of Québec to confirm that the display of a trade-mark on public signs and commercial advertising in a language other than French when there was no French version of the trade-mark did not violate the Charter and Regulation.

In 2014, the Superior Court ruled in favour of the retailers. The Superior Court recognized that although a business name and a trade-mark can be synonymous, they are two distinct legal concepts. Accordingly, the Superior Court ruled that section 27 of the Regulation governing the display of business names did not apply to recognized trade-marks.

In dismissing the Province of Québec’s appeal, the Appeal Court pointed to sections of the Charter and Regulation which allow for the adoption of a non-French trade-mark on public signs without generic French language.

For the reasons for judgment in Magasins Best Buy ltée c Québec (Procureur general) 2015 QCCA 747 (en français) see:http://tinyurl.com/mrl7ova.