Canada: Court Interprets Quebec French Language Sign Requirements, Trade-mark Exception

A recent, lengthy decision gives interesting guidance on Quebec language legislation as to the rules applicable to the predominance of French, the use of trade-marks on signs and in particular the protection for unregistered trade-marks. It also addresses new constitutional challenges to this legislation.

In Quebec v. 156158 Canada Inc., 24 anglophone merchants in the Montréal area challenged various charges against them for violation of provisions of the Charter of the French Language (Language Charter) restricting the use of languages other than French on public signs, posters, advertising, brochures and packaging.

The Court of Québec, Criminal Division, addressed constitutional challenges to the Language Charter and gave some guidance as to the interpretation of some of its provisions, in particular with respect to public signs and trade-marks.

CONSTITUTIONAL CHALLENGE

Among the many issues raised in the decision, the court addressed constitutional challenges to the Language Charter. Some of the arguments invoked that the socio-demographic situation in Quebec had changed since previous decisions recognized the constitutionality of the Language Charter, that the French language is no longer vulnerable, and that the protection of French in Quebec through the Language Charter is no longer justifiable or necessary. The court found that the petitioners failed to make their case and refused to declare the provisions of the Language Charter unconstitutional.

MARKED PREDOMINANCE

Some of the violations dealt with bilingual outdoor signs in both French and English that failed to comply with the requirement that when a language other than French is used in a public sign, the French text must be "markedly" predominant. In the case of some of these signs, the space allotted to the English text was equal to the space allotted to the French text, and the French text was placed above the English text.

The regulation enacted under the Language Charter deems that, to be markedly predominant, the French version must have a much greater visual impact, and such inscription is deemed "markedly predominant" if it is at least twice the size of the characters or space allotted to the English text.

The court found that mere placement of the French text above the English text is not sufficient to render the French "markedly predominant" and the safest approach is to follow the "2 for 1" rule outlined in the regulation.

TRADE-MARKS AND SIGNS

One interesting situation raised in the decision is that of an old truck that a moving company no longer used but kept on its lot for spare parts. Although the company's active trucks bore bilingual slogans, this old truck had a slogan in English only—"Everything inside packed with pride"—that had been used by the moving company since 1930.

This old truck raised two interesting points. The court first found that the rules on "public signs" were not meant to apply to signs that are intended to be out of the public view, such as signage on the old truck kept in a storage lot.

Second, even though the court found that the requirements did not apply, it also examined the specific slogan appearing on the truck and found that the slogan functioned as a trade-mark. Trade-mark law recognizes both unregistered and registered trade-marks. The court applied the trade-mark exception to an unregistered trade-mark and said that the absence of a registration for a trade-mark is not an impediment to the exemption in the regulation from section 58 of the Language Charter.

On the other hand, the court found that another party who invoked the exception based on unregistered trade-marks could not benefit from it since there was no evidence that its descriptive slogan functioned as a trade-mark. This illustrates that not all expressions or slogans will benefit from the trade-mark exception, but only those that are recognized, whether at common law or by registration, as trade-marks.

This is not new law since at least one earlier decision had recognized the application of the trade-mark exception to unregistered trade-marks. However, it is noteworthy in light of the administrative position that has been adopted by the Office québécois de la langue française (OQLF) with respect to this exception. The OQLF has stated that, in order to use consistent, objective and uniform criteria, it would grant the benefit of the exception only in relation to registered trade-marks.

Although this decision confirms the protection given to unregistered trade-marks under the Language Charter, it will be interesting to see whether the OQLF will adjust its administrative approach to the issue. In any case, entities doing business in Quebec should continue to adopt trade-mark strategies that take into consideration not only the OQLF's position in this respect, but also the need for protection of their trade-marks.

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