QUEBEC
APPEALS ENGLISH TRADE-MARK DECISION, LANGUAGE WATCHDOG SEEKING TO BE UNLEASHED
As
my colleague, Scott Miller, posted here on April 9, 2014 the
Superior Court in Quebec ruled that the Quebec language watchdog, the Office
Québécois de la Langue Française (OQFL), attempts to force retailer to change
their signage to include French was contrary to the existing language laws of
Quebec.
All
of us here at MBM were confident that, with a newly elected federalist party in
Québec City, the issue would end with this decision.
However,
today it is being reported that the Government of
Quebec is appealing the April 9th decision.
As we noted earlier, s.58 of the Charter of the French Language (French Charter), reads, “public signs and poster and commercial advertising must be in French” (translation). However, the French Charter Regulation (specifically sections 7(4) and 25(4)) permit English only packaging and signage for a “recognized trade-mark within the meaning of the Trade-marks Act, unless a French version has been registered”. Jurisprudence on these sections, however, has differentiated between trade-marks and trade-names, where non-french trade-names do not benefit from the exemption.
As we noted earlier, s.58 of the Charter of the French Language (French Charter), reads, “public signs and poster and commercial advertising must be in French” (translation). However, the French Charter Regulation (specifically sections 7(4) and 25(4)) permit English only packaging and signage for a “recognized trade-mark within the meaning of the Trade-marks Act, unless a French version has been registered”. Jurisprudence on these sections, however, has differentiated between trade-marks and trade-names, where non-french trade-names do not benefit from the exemption.
It
has been accepted that the Federal Trade-Marks Act 'recognizes' both common law
(unregistered) and registered trade-marks. Therefore, even unregistered
trade-marks will benefit from the exemption in the French Charter Regulations.
The
filing of this Appeal creates more uncertainty, for the short term, whether the
OQFL will recognize unregistered trademarks or argue such marks are actually
trade names not subject to the English use exception.
As
a precautionary measure, it may still be advisable to file for English
trademarks to avoid the OQFL. If threatened about the legitimacy of whether an
English word is a recognized trademark, it is answerable by noting that the
English word is the subject of a pending trademark application.
I
would prognosticate that this matter may head all the way to the Supreme Court,
but that would be just tempting fate.
By Jahangir Valiani
By Jahangir Valiani