Sep 09 2016
Doing business in Québec can sometimes pose unique challenges for trademark owners. The Québec Charter of the French Language (the “Québec Charter”) defines French as the official language of Québec, including as the language of business and commerce.1 In addition, the Québec Charter mandates the use of French and controls the manner in which French is displayed on products, public signs, posters and in commercial advertising. Although this may conflict with how trademark owners wish to use and display their trademarks, there are exceptions for “recognized trademarks”. Therefore, owning and using a trademark gives trademark owners greater flexibility in navigating the Québec Charter requirements. Despite proposed changes which will likely narrow the scope of the “recognized trademarks” exception, owning a trademark, particularly a registered trademark, will remain an attractive proposition for those conducting business in Québec.
The Québec Charter of the French Language (Québec Charter) was established for the protection and promotion of the French language in Québec.2 The Québec Charter mandates the use of French on product inscriptions and in brochures, catalogs and similar printed material provided with products. Importantly for trademark owners, it also mandates the use of French on public signs and posters and in commercial advertising. L’Office québécois de la langue française (the “OQLF”) is responsible for ensuring compliance with the Québec Charter. Failure to comply with the Québec Charter may lead to criminal prosecution or penalties.
Under the Québec Charter, every inscription on a product, on its container or on its wrapping, or on inserts or documents supplied with it must be in French. The French inscription may be accompanied with a translation or translations, provided the French portion is at least as prominent.3
Public signs, posters and commercial advertising must also be in French. They may be in both French and in another language provided the French portion is “markedly predominant”.4 “Markedly predominant” is defined in Regulations made under the Québec Charter – French will be considered markedly predominant when the French portion of the sign or poster is at least twice as large as the non-French portion. If the French portion is on a different sign or poster, there must be at least twice as many French signs or posters as those of the other language. This is colloquially referred to as the “two-for-one” rule.5
There are various exceptions to the French language requirements. On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:
- the firm name of a firm established exclusively outside Québec;
- a name of origin, the denomination of an exotic product or foreign specialty, a heraldic motto or any other non-commercial motto;
- a place name designating a place situated outside Québec or a place name in such other language as officialized by the Commission de toponymie du Québec, a family name, a given name or the name of a personality or character or a distinctive name of a cultural nature; and
- a recognized trade mark within the meaning of the Trademarks Act (R.S.C. 1985, c. T-13), unless a French version has been registered.6
Recent court decisions have considered various aspects of the Québec Charter and the “recognized trademarks” exception. In the 2015 Québec Court of Appeal decision Magasins Best Buy Ltee v Québec, the court held that registered trademarks displayed publicly on store fronts were not equivalent to trade names or names of enterprises and did not have to be translated into French.7
In Québec (AG) c 156158 Canada Inc. (Boulangerie Maxie’s)8, an April, 2016 decision of the Québec Superior Court, the court considered two important issues relating to the Québec Charter.
Firstly, in considering the interpretation of “markedly predominant”, the Quebec Superior Court indicated that marked predominance means the French version must have greater visual impact compared to the other language. The Quebec Superior Court affirmed that simple priority in the placement of the French language did not meet the requirements of French being markedly predominant. In affirming the “two-for-one” rule, the Trial Judge had stated: “[w]hen it comes to the language of the signs and the marked predominance of the French language, size does matter.” The Québec Superior Court agreed.9
Secondly, the Trial Judge affirmed previous decisions which had indicated that “recognized trademarks” included unregistered trademarks. On that basis, the Trial Judge acquitted a merchant who argued that the slogan “everything inside packed with pride” was used as a trademark and thus did not need to be translated into French. The Québec Superior Court did not overturn this aspect of the decision. It is now more firmly established that a business owner may rely on common law trademark rights to take advantage of the “recognized trademarks” exception. However, this decision is presently under appeal to the Québec Court of Appeal and so considerable uncertainty remains.
On May 4, 2016, the Québec National Assembly released draft regulations under the Quebéc Charter relating to how trademarks would be displayed. Under the draft regulations, trademarks remain exempt and do not need to be translated into French. However, where a non-French trademark is displayed on outdoor signage, a “sufficient visual presence” of French must also exist. This can be accomplished by including a French generic term or description of the products or services in question, a French slogan, or any other term providing information pertaining to the products or services. The French need not be markedly predominant, but it must be permanently visible, visually similar to the non-French trademark and be legible in the same visual field. The new regulations will come into force 15 days after they are officially published. This is likely to occur late 2016 or early 2017. The regulations will apply immediately to all signs erected after they come into force. Existing signs will have three years to comply.
Clearly, the Québec Charter and its regulations, both existing and proposed, are a relevant consideration for trademark owners doing business in Québec. Even under these proposed regulations there are significant benefits to owning and using both registered and unregistered trademarks. Trademark owners generally have more flexibility in how their trademarks can be displayed in commercial advertisements and public signage and this can help ensure their trademarks maintain distinctiveness. Moreover, owning a registered trademark further relieves the owner from having to prove that a slogan or term qualifies as a common law trademark in order to claim the exception. However, the landscape for trademark owners may yet change and is likely to remain dynamic. Trademark owners will have to remain vigilant to ensure they comply with the Québec Charter while displaying their trademarks in a manner that maintains their distinctiveness and advances their business interests.
This article is for information purposes only and does not constitute legal or professional advice.
Authors: Joanna Pitkin, Andrew Kaikai (former associate)
For more information, contact one of our professionals.
1 Charter of the French Language, RSQ, c C-11
2 Charter of the French Language, RSQ, c C-11; Regulation respecting the language of commerce and business, RRQ 1981, c C-11; Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, RRQ 1981, c C-11
3 Charter of the French Language, RSQ, c C-11, s 51-52; Regulation respecting the language of commerce and business, RRQ 1981, c C-11, r 9, s 3
4 Charter of the French Language, RSQ, c C-11, s 58
5 Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, RRQ 1981, c C-11, r 11, s 1.
6 Regulation respecting the language of commerce and business, c C-11, r. 9 at s. 3.
7 Magasins Best Buy ltée v Québec (Procureur général), 2015 QCCA 747.
8 2016 QCCS 1676
9 Québec (AG) c 156158 Canada Inc. (Boulangerie Maxie’s), 2016 QCCS 1676 at para 13
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Tags: Advertising & Marketing, Joanna Pitkin, Trademarks