Canadian Lawyer InHouse

11 canadianlawyermag.com/inhouse august 2014 By Brigitte Chan Intellectual Property T he Quebec Government is not giving up on its quest to increase use of the French language on public signage. On May 8, the Quebec Government filed an appeal against the Quebec Superior Court deci- sion Magasins Best Buy ltée v. Québec (Procureur général), wherein Justice Michel Yergeau found that English- only trademarks on public signage do not need to be accompanied by a French descriptor of the nature of the business. Retailers Best Buy Co., Costco Wholesale Corp., GAP Inc., Old Navy, GUESS? Inc., Walmart Canada, Toys "R" Us Inc., and Curves International must have undoubtedly been thrilled with the Superior Court de- cision since it confirms their English-only trademark on store-front signage is in compliance with the Charter of the French language and its regulation, contrary to the position of the Office québécois de la langue française. The Charter generally requires French as the lan- guage of commerce in Quebec. However, the charter's regulation respecting the language of commerce and business provides an exception for recognized trade- marks within the meaning of the Trademarks Act in that they can appear in a language other than French, unless a French version is registered. For two decades, this exception was sufficient for businesses to display their English-only trademarks on store-front signage, but around 2010, the OQLF changed its interpretation by finding the display of a trademark on public signage equates to the display of a trade name. The attorney general of Quebec indicates that a trademark on sig- nage functions as a trade name since it serves to identify the business and make itself known to the public. Ac- cordingly, a trade name falls within the ambit of s. 27 of the regulation which states that "an expression taken from a language other than French may appear in a firm name to specify it provided that the expression is used with a generic term in the French language." The attorney general has now appealed the decision based on three grounds: 1. The judge erred in interpreting the terms "name" and "name of an enterprise" at sections 63 and 64 of the charter and s. 27 of the regulation to mean a name given to a legal entity at the time of its constitution. The attorney general states that these terms should be given a broad interpretation that would include any other name under which a business conducts its activ- ity or identifies itself. 2. The judge erred in finding that a trademark on public signage is not a name to identify a business, but rather serves to identify its services. The Superior Court concluded that a trademark is a separate distinct legal concept that is different from a trade name, and found that a trademark displayed on public signage is not synonymous to a trade name that would result in the application of s. 27 of the regula- tion that requires a French descriptor to be added to the non-French mark. Although the attorney general appears to agree on the separate concepts, it introduces a new term, "trademark name," on appeal in that it is possible for a trademark to be used as a trade name on public signage since it serves to identify the business and distinguish itself. 3. The judge erred in finding that the trademark excep- tion at s. 25(4) of the regulation settles the issue and by restrictively interpreting s. 27 of the regulation to exclude a trade name on public signage. The attorney general's position on appeal is that, in interpreting s. 27 of the regulation, consideration should be given to the global context of the charter, the goal of which is to protect the French linguistic image in Quebec. It also intends to submit that the trademark exception should not be considered in isolation; that use of a trademark on public signage and the obligation to accompany it by a French generic term does not un- dermine the integrity of the trademark given the trade- mark exception at s. 25(4) of the regulation; and that the charter and the regulation must be interpreted accord- ing to recognized rules of interpretation as opposed to relying on advice of the Conseil de la langue française and past administrative practice of the OQLF. Until the appeal decision is rendered, businesses re- main uncertain as to whether they must change their signage to add a French generic term. However, as stated by the Superior Court, businesses are free to voluntarily add a French generic term or slogan to their non-French trademarks on signage irrespective of its decision. IH English-only trademarks face another challenge Quebec launches appeal on use of French on retail signage. Brigitte Chan is a partner with Bereskin & Parr LLP in Toronto.

• Cover