Retailers Make Their Mark: Québec Court Sides with Retailers on the Use of Trade-Marks in Public Signage and Commercial Advertising

more+
less-

In a significant decision released on April 9, 2014, the Superior Court of Québec held that the Québec Charter of the French Language (the Charter) does not require non-French trade-marks appearing on public signage be accompanied by a generic term in French. The decision acknowledges the role of retailers in the Québec commercial landscape and the importance of independent economic choices. 

At issue was the ability of retailers to use their English trade-marks on exterior store signage.  Although the Charter creates a general requirement for the use of French, there is a long standing exception for recognized trade-marks (provided that a French equivalent has not been registered in Canada). Notably, many retailers (including all of the petitioners in this case) had relied on this exception in using their English trade-marks on signage in Québec for many years without objection from the Office québécois de la langue française (OQLF).  Indeed, each of the petitioners had been issued francization certificates by the OQLF which effectively confirmed their compliance with the Charter.

In or around 2009, the OQLF revisited its interpretation of the Charter and took the position that use on exterior signage constituted use as a trade-name, as opposed to a trade-mark, meaning that the above-noted exception was not available and that non-French marks would need to be accompanied by a generic descriptor in French. By way of example, a clothing store for children’s clothing would have been expected to add a statement along the lines of “vêtements pour enfants” to its exterior signage. In addition to the cost of implementing such changes, the OQLF’s position also raised hotly debated issues as to a retailer’s control over its own brand and ability to implement its own marketing decisions.

As a result of this policy change, the OQLF issued notices to several retailers requiring them to change their store signage such that a generic term in French language accompanied their trade-marks. In response, eight retailers petitioned the Superior Court for a declaratory judgment confirming that their public signs and advertising complied with the Charter and that the addition of a generic term in the French language was not required.

The Attorney General of Québec argued that when a retailer is publicly displaying its trade-mark, it is in fact displaying its name. The court, however, disagreed with the AG’s interpretation of the Charter and rejected its submission that a business name or trade name is synonymous with a trade-mark.  Ultimately, the court upheld the status quo and the ability of retailers to continue to use their recognized trade-marks in languages other than French.

The AG has 30 days to appeal the decision. Assuming that the ruling stands, retailers in Québec will remain in control of their branding and marketing decisions as to how best to reach their Québec consumers.

 

Topics:  Advertising, Canada, Retail Market, Retailers, Trademarks

Published In: Civil Remedies Updates, General Business Updates, Communications & Media Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Osler, Hoskin & Harcourt LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »