Trademarks and the Charter of the French Language

In an effort to protect the vulnerable nature of the French language in Quebec, in 1977 the Quebec province adopted the Charter of the French Language. The charter is a legislative measure designed to promote the use of the French language throughout Quebec in areas such as education, civil administration, law and commerce. With respect to its application in the area of business and commerce, the charter requires that the following be in French:

• Public signs and posters and commercial advertising (Section 58).
• Inscriptions on products (Section 51).
• Brochures, catalogues, folders, commercial directories and any similar publications (Section 52).

Therefore, a company doing business in Quebec and engaging in such activities must ensure that the French language is used or, if used with another language, that the French portion is at least equal to the other language portion, except for public signs and commercial advertising, where French must be markedly predominant.

However, the charter provides certain exceptions to this rule. The Regulation Respecting the Language of Commerce and Business provides in Articles 7, 13 and 25 that French need not be used in the following situations:

• The name of a firm established exclusively outside Quebec.
• 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, family name, given name or the name of a personality or character or a distinctive name of a cultural nature.
• A recognised trademark within the meaning of the Trademarks Act.

The regulation provides that where the expression used is a trademark that has been registered with the Canadian Intellectual Property Office, it may be used exclusively in a language other than French unless a French version of the trademark has been registered.

The situation is less clear with respect to unregistered trademarks or trademarks that are in the process of being registered. Despite the fact that the Trademarks Act recognises unregistered trademarks as trademarks, the Office Québécois de la Langue Française - the authority in charge of enforcing the charter - took the position that unregistered trademarks and trademarks that are subject to an application for registration should not benefit from the exception provided for in the regulation.

However, as noted by Justice James L Brunton in Centre sportif St-Eustache v Québec (Procureur général) (2009 QCCS 3307), the court is not bound by the interpretation given to the charter by the Office Québécois de la Langue Française. In rendering such a decision, the judge reaffirmed the previous decision rendered by the Court of Quebec in Québec (Procureur général) v St-Germain Transport (1994) inc (2006 QCCQ 7631), which held that “it is not necessary to register a trade-mark for it to be recognized as a trade-mark”.

In order to be recognised as a trademark, the expression must also be used as a trademark - that is, used for the purpose of distinguishing the products or services of the trademark owner from those of others. However, proving such use is not always easy. For instance, in Centre sportif St-Eustache v Québec (Procureur général) the Superior Court, in reviewing a decision of the Court of Quebec, held that the unilingual English company name displayed in front of the appellant’s building which was not directly related to the products or services of the appellant was insufficient to fall under the exception provided for in the regulation. However, the court failed to examine the possibility of linking the use of the company’s name to the service offered by the appellant (in this case, the operation of a bowling alley). In addition, in Québec (Procureur général) v St-Germain Transport (1994) inc the use of an expression indicating the year of manufacture of a vehicle (“Class of 200_”) was deemed insufficient to be qualified as use as a trademark, since it described a characteristic of the goods being sold.

In enforcing the charter, the Office Québécois de la Langue Française can institute penal proceedings against individuals or companies that violate the charter. All persons found guilty of such an offence risk being fined an amount ranging from C$250 to C$7,000 per infraction.

It follows that the most effective way of benefiting from the trademark exception provided for by the regulation is to register the non-French unilingual expression as a trademark with the Canadian Intellectual Property Office. Furthermore, in light of the ambiguity created by the decision in St-Germain Transport, such protection becomes imperative for the holders of trademarks that may be suggestive of certain characteristics of the goods being sold. In effect, companies that do not wish to use a French trademark should consider registering their non-French unilingual trademark to avoid potential legal proceedings, and at the same time benefit from the other advantages associated with registering a trademark.