IN QUÉBEC, ON PARLE FRANÇAIS JURISDICTION REPORT: CANADA
Victoria Carrington Shapiro Cohen
“Does this have to be translated into French?” Most Canadian trademark practitioners who advise foreign brand owners on business in Canada have heard this question. It oſten surfaces—sometimes as an aſterthought— when the client sends sample labelling or signage, seeking confirmation that the trademark is being properly used.
A recent campaign by the government of Québec regarding the mandatory use of French language descriptions or slogans by Québec businesses on their signs provides further impetus to considering the question.
In the province of Québec the Charter of the French Language provides, in sections 51, 52 and 58, that French will be the language of commerce and business in Québec. Tis includes all public signs, posters and commercial advertising, as well as inscriptions, on a product, on its containers or packaging, catalogues, brochures, leaflets, etc. Languages other than French may also be used, but French must be markedly predominant or of equal prominence.
Regulations 7 and 25 of the charter identify exceptions to this rule, including that a “recognized trade-mark within the meaning of the Trade- marks Act” may appear on a sign or product exclusively in a language other than French, unless a French version has been registered; and that the name of a firm established exclusively outside of Québec may be exclusively in a language other than French.
Te term “recognized trade-mark” has been interpreted by both the limited case law on this issue and the Office québécois de la langue française’s internal guidelines (which are not actually referred to or posted on the Office’s website,
www.oqlf.gouv.qc.ca), to include a trademark used in common law without the benefit of a registration. Tis is in line with the Canadian Trade-marks Act, which clearly recognises common law rights.
As a result, the general rule is that for public signage, products and packaging that are displayed and sold in Québec, all English text must be translated to French and given the same or greater prominence unless the English text is the name of a business established exclusively outside the province, or is a recognised trademark (the exception to the exception is, if there is a French version of the English trademark, you have to use that as well!).
Te Office has the discretion to carry out its mandate on its own initiative but, in practice, enforcement is primarily a complaint-based system. Unless someone objects to the use of English wording and files a complaint with the Office (which cannot be done anonymously), usually nothing happens. Currently, approximately 25 percent of complaints relate to English-only signs and the Office is becoming concerned with the increasing use of English (and other language) trademarks as business names.
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In an effort to ‘Frenchify’ English company names, on November 13, 2011, the office launched its ‘A sign of respect for the law’ campaign. It has been widely publicised (in French only) in the Québec media and has the goal of inducing companies to add French descriptions or slogans to their signs.
According to the campaign website, the “recognized trade-mark” exception still applies, but with limits. Te Office is “reminding” companies that although the charter does not require them to translate non-French trademarks, such marks do have to be accompanied by a French slogan or a descriptive/generic expression in French that describes the product or business operations.
Four acceptable methods of displaying a trademark used as a company name are suggested. For example, a furniture store known by the trademark Daily Living may be identified on its visible signage as: Ameublement Daily Living (adding a generic descriptor to the mark); Les Beaux Jours (using a French version of the mark); Daily Living Pour un décor au gout du jour (adding a generic slogan to the mark); or Les Beaux Jours Daily Living (using French and English, with the French version in larger letters).
Te Office is working with companies to correct sign violations proactively, rather than through sanctions. Smaller companies with between five and 99 employees may also qualify for financial aid to assist with sign compliance.
Dr Victoria E. Carrington is a partner at Shapiro Cohen. She can be contacted at:
vcarrington@shapirocohen.com
World Intellectual Property Review March/April 2012 45
“THE OFFICE IS ‘REMINDING’ COMPANIES THAT ALTHOUGH THE CHARTER DOES NOT REQUIRE THEM TO TRANSLATE NON-FRENCH TRADEMARKS, SUCH MARKS DO HAVE TO BE ACCOMPANIED BY A FRENCH SLOGAN OR A DESCRIPTIVE/GENERIC EXPRESSION IN FRENCH.”
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