19 May 2018TrademarksSuzanne Antal and Micheline Dessureault

Multilingual trademarks: Finding the lingua franca

In the wake of high-profile decisions that have made the headlines in recent years, the question of the use of French in non-French trademarks remains unclear: what are the principles regarding the use of a trademark in a language other than French and are non-French trademarks allowed?

Major retailers such as Best Buy Canada, Costco Wholesale Canada and Gap (Canada), among others, have appeared before the Superior Court in the province of Québec. The issue was to determine whether a trademark in a non-French language without a registered French version could be used for public display and in commercial advertising within the province.

French is the mother tongue of approximately one sixth of Canada’s population (of 36 million people), the majority of whom live in the province of Québec. Additionally, about one million francophones live in other provinces. The Official Languages Act of 1969 recognised English and French as having equal status in the government of Canada. The Charter of the French Language was established for the protection of the French language in the province of Québec.

The Office Québécois de la Langue Française (OQLF) is the official watchdog organisation responsible for ensuring the respect of the Charter and other policies pertaining to linguistic officialisation in civil administration and businesses. It also monitors the linguistic situation in Québec.

Trademark rules

Any person or company that sells goods or services in Québec has to respect the language requirements of the Charter. But there are exceptions, one of which is regarding a recognised trademark. The OQLF and retailers were of opposing views as the OQLF tried repeatedly (from 2012 to 2016) to enforce the use of the French translation of a non-French trademark.

The Superior Court ultimately decided that retailers were entitled to use their non-French trademarks. The court’s ruling meant that a recognised trademark may appear exclusively in a language other than French. This decision was based on article 25 (4) of the Charter’s Regulations, which predate the court’s decision.

The court said that on public signs and posters and in commercial advertising, the following may appear exclusively in a language other than French:

The company name of a firm established exclusively outside Québec;

A name of origin, the denomination of an exotic product or foreign speciality, a heraldic motto or any other non-commercial motto;

A place name designating a place situated outside Québec or a place name in such other language as officialised by the Commission de toponymie du Québec, a family name, a given name or the name of a personality or character or a distinctive name of a cultural nature; and

A recognised trademark within the meaning of the Trade Marks Act (RSC 1985, c T-13), unless a French version has been registered [our emphasis].

For the OQLF, a recognised trademark is a registered trademark. However, there is no mention in the act that a recognised trademark must be registered. Thus, the absence of a trademark registration may not necessarily be an obstacle to the application of the relevant statutory exemption. This, however, was challenged in the past by Québec authorities and may be further challenged because a corporate name or trade name is considered as a distinct legal concept from that of the trademark and is therefore subject to a different set of rules.

Some brand owners chose to register a French version of their trademark for use in the province of Québec. ‘Staples’ became ‘Bureau en gros’; ‘Shoppers Drugmart’ is ‘Pharmaprix’. This choice is often made because trademarks in French allow for a better connection with the consuming public who do not speak English. The majority of brand owners decided to keep their non-French trademarks.

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