Digital Brain
digital brain
digital brain

Public Display of English-Language Trade-Marks: Quebec Court of Appeal Confirms the Decision in Magasins Best Buy Ltée v. Québec (Procureur Général)

May 2015 Intellectual Property Bulletin 2 minute read

The Quebec Court of Appeal, in a unanimous decision rendered on May 1, 2015,[1] confirmed the first instance ruling (see our analysis in April 2014) with respect to the public display of trade-marks registered only in English, without being required to add thereto a generic term in French.[2]The facts in this case are spread out over the course of many years. A number of retailers owning trade-marks registered in English only (Costco, Best Buy, Guess, Old Navy, Toys ‘R’ Us, etc., the “Retailers”) have a long-standing practice of publicly displaying these trade-marks in Quebec for business signage purposes, pursuant to an exception to the requirement under the Charter of the French Language [3] (the “Charter”) that public signs, posters and commercial advertising be made in French. Subsection 25(4) of the Regulation respecting the language of commerce and business [4] (the “Regulation”) provides that “On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French: a recognized trade-mark within the meaning of the Trade Marks Act, unless a French version has been registered”.

Following the steps taken by the Office québécois de la langue française (Quebec’s Language Bureau, hereinafter the “OQLF”) in order to compel businesses using English-language trade-marks to ‘francize’ their business signage and advertizing, the Retailers filed a motion for declaratory judgment in order to clarify the authorized derogations from the Charter, including subsection 25(4) of the Regulation. The OQLF argued, both in first instance and in appeal, that the public display of a trade-mark could be equated with the display of a business name, which, pursuant to the legislation applicable to business names, required it to be used with a generic term in the French language, in accordance with section 63 of the Charter.

The Court of Appeal dismissed this interpretation, confirmed the trial judge’s reasoning, and held that none of the trade-marks in question were the “name of an enterprise” within the meaning of sections 63 and 67 of the Charter, of articles 305 and 306 of the Civil Code of Quebec or of An Act Respecting the Legal Publicity of Enterprises. [5]The Court of Appeal therefore determined that the Retailers’ practices were in compliance with the Charter and the Regulation, which allow the public display of a trade-mark registered only in English, without being required to add thereto a generic term or any other descriptive element in French. The Court also added that subsection 25(4) does not require the owner of multiple trade-marks, one of which is registered in French, to use one trade-mark rather than the other. Furthermore, this provision does not place any limitation on the nature of the display, and therefore includes all types of signage, including signs affixed on storefronts.

by Elisa Henry and Christian Abouchaker, Student-at-Law

1 Magasins Best Buy ltée v. Québec (Procureur général), 2015 QCCA 747.

2 Magasins Best Buy ltée v. Québec (Procureur général), 2014 QCCS 1427.

3 CQLR, c. C-11.

4 CQLR, c. C-11, r. 9.

5 CQLR, c. P-44.1.

A Cautionary Note

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2015

Insights (5 Posts)

Featured Insight

Privacy, Technology and Cybersecurity Issues in Tech Transactions

Full evaluation of a target's privacy, technology and cybersecurity compliance in due diligence is critical for transactions involving technology companies.

Read More
Dec 6, 2022
Featured Insight

TSX Considering Adoption of Pricing Guidelines for Prospectus Offerings

TSX Considering Adoption of Pricing Guidelines for Prospectus Offerings

Read More
Dec 6, 2022
Featured Insight

Ottawa LRT and the Future of P3s: Public (interest), Private (collaboration) & (meaningful) Partnerships

A summary of the Commission’s key recommendations arising from the Ottawa Light Rail Transit Public Inquiry regarding the public-private-partnership (P3) model.

Read More
Dec 5, 2022
Featured Insight

Arbitration Clauses Should be Respected, Most of the Time: Supreme Court of Canada Shifts Focus Away From Single Proceeding Model for Insolvencies in Rendering Arbitration Clause Inoperative

The SCC has provided a framework on when arbitration clauses should be rendered inoperative in order to promote efficiency in an insolvency proceeding.

Read More
Dec 5, 2022
Featured Insight

Corporate Counsel Webinar | Beyond the Basics: Tools and Strategies to Create a More Inclusive Legal Work Environment

Join our guest speaker, Jodie Glean-Mitchell, Executive Director of Equity, Diversity and Inclusion, from the University of Toronto as we invite participants to dive deeper into the intricacies of intersectional identities and experiences with (micro)aggressions and their implications for the legal work environment.

Details
Tuesday, December 13, 2022