On April 10, the Québec Superior Court released its decision on a challenge mounted by several international retailers against a policy of the Office québécois de la langue française (OQLF) regarding use of non-French trademarks on storefront signs.1 The Court confirmed that businesses can use their registered trademarks on public signs outside their premises without the need to add generic French language.
Trademarks and the Charter of the French Language
The Trademark Exception
The Charter of the French Language (Charter) is intended to protect the prominence of the use of French in Québec. To that end, the Charter and its associated Regulation Respecting the Language of Commerce and Business (Regulation) specify that French must appear on inscriptions on products, advertisements and other business materials. However, under the Regulation, there has always been an exception for trademarks that are not French and for which no French equivalent has been registered. Essentially, this exception allows the use of trademarks in languages other than French without the need for translation or for French to appear alongside the trademark.
OQLF’s 2011 Reinterpretation
In 2011, the OQLF announced it was changing its interpretation of the trademark exception under the Regulation. The OQLF pointed to another section in the Regulation, which required "trade names" not in French to include a generic French term, or otherwise be altered to include or give prominence to French. The OQLF essentially stated this "trade name" requirement trumped the trademark exception, and therefore any business that used a non-French trademark on commercial advertising and public signs, including storefront signs, would be required to alter its trademark to include French.2
The Challenge by International Retailers
Following the OQLF policy change, a group of international retailers (including Best Buy, Costco, Gap, Old Navy, Guess? and Wal-Mart) filed a motion in the Superior Court of Québec. In their application, the retailers alleged that the OQLF had threatened to suspend the "francization" certificates of some of the retailers. These certificates indicate that the OQLF is satisfied with a business’ efforts to adopt the use of French at all levels, and entitle a business to certain government rebates and funding. The retailers sought a declaration from the Court that their use of non-French trademarks did not infringe the Charter, and that the OQLF’s reinterpretation was incorrect.
In its ruling, the Superior Court held that the trademark exception does apply to the use of trademarks on public signs, including storefront signs, and that the public display of a non-French trademark for which there is no French equivalent registered does not violate the Charter.3 Further, the Court explicitly held that the OQLF could not impose any sanction on a business solely for using a non-French trademark, including any action relating to "francization" certificates.
As of the time of writing, the OQLF is reviewing the decision and has not ruled out an appeal. The OQLF has 30 days to ask the Quebec Crown Prosecutor to appeal the decision.
* With assistance from Albert Chan, Articling Student.
1 Magasins Best Buy Ltée et al. v. Québec (Procureur général), 2014 QCCS 1427 (Apr. 9, 2014).
2 Notably, this announcement by the OQLF came about without any change in the Charter, Regulation, or any other legislation.
3 In essence, the Court held that the pre-2011 interpretation of the Charter and Regulation was correct.
To discuss these issues, please contact the author(s).
This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.
For permission to republish this or any other publication, contact Janelle Weed.
© 2021 by Torys LLP.
All rights reserved.