Trademarks and the Politics of Language
|Written by: Mihaela Dumitrean (left) and
Andrés Canella (not pictured), BENOÎT & CÔTÉ
Posted: Jun 14, 2013 @ 7:45 am
Trademarks are an important protection for any business, but nowhere in Canada is this as vital as in Québec, where failure to have a registered trade-mark may lead to notices and fines for business owners. These are precipitated, but not imposed, by the Office de la langue française (translated to: Office of the French Language), or OQLF, a public organization mandated to uphold the quality of the French language, and to ensure it become the “normal and everyday language of work, instruction, communication, commerce and business” in the province of Québec. Since the 2012 provincial election that saw a return to power for Québec’s leading sovereigntist party, the Parti Québecois, the OQLF has been implicated in a few high profile cases that have muddied the waters for businesses operating in Québec.
Most famously, in November 2012, major retailers such as Walmart, Gap and Best Buy, decided to take the organization to court after receiving notices and potential fines. Many major retailers have already made francization efforts: notably KFC to PFK (“Poulet frit Kentucky”) and Starbucks, who added “Cafe” before their brand name. The OQLF is looking for the other big retailers to follow suit, adding a French descriptive such as les magasins (“stores”) to their signs. Louise Marchand, former head of the OQLF, made the bold statement, “Displaying the name of the company in French is a show of respect for the law.”
The Law she alluded to is the Charter of the French Language, specifically section 58, which states:
58. Public signs and posters and commercial advertising must be in French.
They may also be both in French and in another language provided that French is markedly predominant.
More recently, in March 2013, a franchisee of a Canadian nutritional beverage chain, Liquid Nutrition, was warned he would receive a $500 fine if an “e” was not added to “liquid”, thus deeming the sign acceptable to the OQLF. After submitting a proposed logo change to the office, he then received a notice from his franchisor claiming a loss of trademark rights should the change be put into effect. Furthermore, he estimated the cost of changing the logos would be upwards of $10,000.
The results of these various notices issued by the OQLF have caused serious confusion on what can be deemed acceptable signage. While many retailers simply bite the bullet and make the changes, those who oppose the OQLF’s decisions believe they have little to worry about under current legislation. The “Regulation respecting the language of commerce and business” outlines exceptions to the aforementioned Charter.
25. On public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:
(4) a recognized trade mark within the meaning of the Trade Marks Act (R.S.C. 1985, c. T-13), unless a French version has been registered.
Emphasis has been placed on the exception concerning trademarks – more specifically “recognized trade-marks”, which under the Trade-marks Act includes both registered and unregistered marks. Thus, as long as the mark is used for distinguishing purposes, it is recognized by Canadian Law as a trademark and is considered an exception to section 58. Peculiarly, the exception to this exception is to have a French version “registered” rather than simply “recognized”, thus potentially limiting the OQLF’s reach in this area. Essentially, this means the OQLF’s notices to registered Canadian trademark owners such as Walmart, Best Buy, or even Liquid Nutrition, are erroneous under current law. Furthermore, business owners who choose to advertise to the public using a “brand” name can legally do so be it a registered trade-mark or not. While this appears simple enough, the problem lies in interpretation.
In the case Centre sportif St-Eustache c. Québec (Procureur général), 2009 QCCS 3307, the Superior Court sided against the owner of a large sports complex that had claimed his use of the term “Bowl-Mat” fell within the exception of 25(4). The Court pointed to the complexity in dealing with trademarks, that are protected, and trade names, which are not:
 The distinction drawn by the trial court between a trade-mark and a trade-name is relevant. The Trade-marks Act provides protection to both. However, the exception in the Regulation applies only to trade-marks and not to trade-names. The trial court found … that the Appellant’s use of its name was a trade-name use and not a trade-mark use which was directed to protecting the goodwill of the enterprise. As pointed out in a study of trade-mark law, this distinction is valid.
« The distinction between trade names and trade marks lies mainly in the fact that a trade mark is used in association with vendible commodities or services while a trade name is more properly used as applied to the goodwill of a business. »
Despite their decision, the Court quoted author Harold G. Fox’s 1972 text The Canadian Law of Trade Marks and Unfair Competition, admitting the distinction between trade-mark and trade name was unclear:
Since the enactment of the Act in 1953 [Trade-marks Act] there will, of course, be more difficulty than ever in drawing a distinction between a trade name attached to a business and a trade-mark when it is used in association with services.
While the Law is clear on the protection of trademarks, both registered and unregistered, the imprecise and incomplete nature of 25(4) makes it vulnerable to interpretation in the OQLF’s favour. Likely emboldened by cases such as the above; in November 2011, the OQLF adopted a new policy, not backed by legislation, in which they would perceive any storefront signs as “trade names” rather than “trademarks”. Their rationale being that the average consumer would make the same conclusion. The case against Walmart and the other big brand names is a bold move that is sure to define and shape the organization’s actions moving forward. Until such time as a decision is made, best practice for businesses looking to use their non-French brands in Québec remains to ensure the trade-mark is properly registered – or at the least, that an application has been filed.
NOTE: This article is a part of our Northern Exposure Series, which focuses on Canada and Canadian intellectual property laws, cases and procedures.
 Charter of the French Language, Preamble.
About the Authors
Mihaela has more than 10 years’ experience in the legal field. She began her career as a legal consultant in Romania and joined the intellectual property profession in 2007 after joining Bereskin & Parr in Montréal. She joined BENOÎT & CÔTÉ in 2010 as a trademark paralegal. She is currently preparing to become a trademark agent.
Andrés Canella is a marketing professional with an interest in media education and the practical application of copyright law. He joined BENOÎT & CÔTÉ in 2012 as head of communication and marketing, helping the burgeoning tech transfer department.
BENOÎT & CÔTÉ is located in Montreal, Canada.