Jane Steinberg, Gowling Lafleur Henderson LLP, Ottawa, Ontario, Canada

INTA Bulletin Features Subcommittee

 

The recent evolution of French-language requirements in the province of Quebec, Canada, poses challenges for even those businesses that are familiar with the Charter of the French Language (R.S.Q., c. C-11). The tug and pull between businesses seeking ease and certainty in packaging, labeling and signage requirements and the mandate of the Office Québécois de la Langue Française (OQLF), the enforcement body established under Section 157 of the Charter, is becoming more pronounced. It is not a comfortable coexistence, particularly as the OQLF is layering more requirements upon both Canadian-based businesses and nonresident businesses seeking to do business in Canada.

The OQLF is not imposing its new regime in secret or under the cloak of darkness. It publicly announced its Fall 2011 campaign to enhance the visibility of French on signage in Quebec. Louise Marchand, president of the OQLF, told the Toronto Star newspaper on August 30, 2011, that the Office intends to target large nonresident stores that are entering the Quebec market but are not compliant with the language laws. A $500,000 campaign started in earnest in November 2011. Marchand has told the press that if the process is left unchecked, English-named stores will undermine Quebec’s status as a francophone society.

The efforts of the OQLF to preserve and enhance the predominance of the French language in the province enjoy at least some public support. Early in November, more than 500 people in Montreal protested what was described as the declining presence of the French language. More recently, the appointment of an English-only-speaking coach for the beloved Montreal Canadiens National Hockey League team triggered further protests by members of the public who believed that an Anglophone should not have been appointed.

In its zeal, the OQLF, over the past year or two, has been imposing questionable interpretations on the provisions of the Charter that are supposed to exempt trademarks from the onerous translation requirements. This has created angst and confusion among business owners, who are disturbed by the twists and turns of the OQLF but who cannot bypass the Quebec market because it is so large and potentially lucrative.

This article highlights the areas where changes, and hence issues, have been arising. One issue is whether the trademark exemption under the Charter applies to both registered and common-law marks. Another is whether, on a sign, a trademark needs to be accompanied by a generic word or phrase that describes the nature of the owner’s goods or business.

The issues are best understood in context. In 1977, the National Assembly of Quebec adopted the Charter, under which French became the official language of Quebec (Charter sec. 1) and “the language of Government and the Law, as well as the normal and everyday language of work, instruction, communication, commerce and business” (Id. Preamble).

Key Charter provisions affecting commerce and business are as follows:

“Every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French…. The French inscription may be accompanied with a translation…, but no inscription in another language may be given greater prominence than that in French.” (Id. sec. 51.)

Public signs, posters and commercial advertising are treated differently, no doubt because of the greater impact these tools have. These items must be in French. As in the case of products and packaging, English is permitted, but the difference here is that French and English cannot be treated equally. Rather, French must be markedly predominant. (Id. sec. 58.)

A regulation made pursuant to the Charter defines “markedly predominant” and gives guidance as to the degree of prominence required. (c. C-11, r. 11.) French is markedly predominant where the text in French has a much greater visual impact than the text in the other language. (Id. sec. 1.) The French text is deemed to have a much greater visual impact if the space allotted to the French text is at least twice as large as the space allotted to the text in the other language (Id. sec. 2) or the characters used in the French text are at least twice as large as those used in the text in the other language (Id. sec. 4). With respect to names, “The name of an enterprise may be accompanied with a version in a language other than French provided that… the French version of the name appears at least as prominently.” (Charter sec. 68.)

Another Charter regulation, respecting the language of commerce and business, provides certain exemptions to these requirements. (c. C-11, r. 9.) One exemption relates to “recognized” trademarks, which are permitted to be exclusively in a language other than French unless a French version of the trademark has been registered. (Id. sec. 7(4).) In the past, Quebec courts have considered “recognized” trademarks as including unregistered trademarks and trademarks that are still the subject of pending applications. Under this interpretation, a trademark does not need to be formally registered in order to benefit from the exemption for “recognized” trademarks.

In Quebec v. St-Germain Transport (1994) Inc. ((2006) QCCQ 7631), the use of only the phrase “Coast to Coast Services” in English on the defendant’s trucks was accepted by the court as a common-law trademark that distinguished the defendant’s transportation services. Therefore, St-Germain could benefit from the exemption and did not need to translate the mark. In Procureur General du Quebec v. Centre Sportif St-Eustache Inc., Terrebonne 700-61-069539-069, 700-61-069540-067 (Qc. Ct. July 25, 2007), the defendant was charged with violating the public signage provisions of Section 58 of the Charter. While ruling that the trademark exemption does not apply to business names, the court nevertheless reaffirmed the principle that a “recognized” trademark includes common-law marks: “The Appellant argues that a trade-mark does not have to be registered to receive the protections contained in the Trade-marks Act. This being so, a non-registered trade-mark can fall within the exception found at para. 25(4) of the Regulation…. The Court would agree.”

For the past year or two, however, the OQLF has been taking the position that only registered trademarks may benefit from the exemption from translation. It says it cannot assess whether a claimed trademark is in fact a trademark. It does not want to have to evaluate whether a mark actually functions as a trademark and has the distinctiveness required of a trademark. Thus, as a matter of commercial reality, the OQLF will exempt a trademark from the French-language requirements only where it is registered.

This shift was, possibly, a response by the OQLF to the practice of some businesses of asserting that the most generic terms were trademarks in order to benefit from the exemption from translation. Nonetheless, however challenging the job facing the Office may be, the OQLF’s current practice is inconsistent with past court decisions. To date, a court has not ruled on the propriety of the revised interpretation.

Even where a trademark is registered, there are still hurdles to be surmounted. Where a registered trademark appears on a sign, as opposed to being directly related to a product, the OQLF views that as trade name use, not trademark use. In this regard, the OQLF is supported by the Quebec Superior Court, Criminal Division, which has found (in the Centre Sportif St-Eustache case) that the use of a trademark on a sign constitutes business name use as opposed to pure trademark use. The OQLF requires that where a registered trademark is used as a trade name (e.g., on a sign), French descriptive language must also be used, to communicate to the public the nature of the business carried on. This is so whether or not the English registered trademark includes English descriptive language.

The OQLF is primarily reactive, responding to complaints (usually by competitors), but it can act on its own (Charter sec. 167), and the more visible the perceived transgression, the more likely it is to do so. In October 2010, fines for breaching the Charter were increased. Section 205 of the Charter provides for fines ranging from $1,500 to $20,000 in the case of a corporation convicted of breaching the Charter or the regulations under it. In the event of a second or subsequent conviction, the fines are doubled. A natural person, such as a director, officer or representative of a corporation, who encourages or incites a person to commit a breach is liable to conviction for the same offense and may be subject to a fine ranging from $600 to $6,000 for a first offense. As in the case of corporations, the fines are doubled in the event of a second or subsequent conviction.

A judge may also impose an additional fine equal to the financial gain realized by the offending party as a result of the offense. Further, on application by the Attorney General, a court may order the removal or destruction of a poster, sign, advertisement, billboard or illuminated sign that is not in compliance with the legislation. (Id. sec. 208.) There is no such provision in relation to products or product packaging or labeling.

Where the OQLF believes that the Charter or a regulation under it has been contravened, it will give the alleged offender formal notice and set a time for the breach to be remedied. (Id. sec. 177.) In practice, there is often negotiation between the OQLF and the “offender,” and the OQLF will provide reasonable time for the corrections to be made. If the offender does not comply, however, the OQLF will refer the matter to the Director of Criminal and Penal Prosecutions, who may institute penal proceedings if appropriate. (Id.) Notably, the burden of proof concerning the permitted exceptions lies on the party invoking them. (Id. sec. 205.1.)

The OQLF is not likely to retreat voluntarily from the interpretations it has placed on the Charter. Language is viewed as an essential part of the French culture, which is to be preserved. Eventually, a court will be asked to opine on the legitimacy of the OQLF’s interpretations, but in the meantime, caution suggests that trademarks be registered if one wishes to avoid the need to translate. Caution also favors the use of a generic descriptor in the French language on such things as signs.

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