LANGUAGE POLITICS AND FRENCH SIGN WARS IN QUEBEC

LANGUAGE POLITICS AND FRENCH SIGN WARS IN QUEBEC –BIG BOX STORES v. THE FRENCH LANGUAGE WATCHDOG
Scott Miller, Nov 29, 2012

The Quebec language watchdog, the Office Québécois de la langue française (OQFL) is demanding that all retailers modify their brand names to include French signage. The OQFL’s demands are not a result of any change in the law but are being driven by politics.

Several of North America’s biggest brands including Walmart, Best Buy, Costco, and the Gap are fighting back.  The retailers have launched a lawsuit in the Quebec Superior Court challenging the policy change of the OQFL. The retailers are refusing to change their signage despite the threats of fines and potential revocations of government ‘francization certificates’. The francization certificates are provided to companies who are in compliance with the language laws and may be entitled to government grants.

In September 2012, a minority Parti Québécois government was elected in Quebec. Premiere Pauline Marois has promised greater enforcement of existing French language laws and possibly the introduction of more ambitious French language laws. The likelihood of new language laws being passed with a minority government is doubtful but politics will drive the Quebec Superior Court to interpret the existing language laws of Quebec in the coming months.

For the past 35 years, the Charter of the French Language (French Charter), section 58 has read, “public signs and posters and commercial advertising must be in French”. However, the retailers have relied upon exceptions in the French Charter Regulations (sections 7(4) and 25(4)) which permit English only packaging and signage for “a recognized trade mark within the meaning of the Trade Marks Act, unless a French version has been registered”.

The Trade-Marks Act ‘recognizes’ both common law (unregistered) and registered trademarks.  The Supreme Court of Canada1 and the Quebec Court of Appeal2   have acknowledged this interpretation. Nonetheless, the Quebec Government has threatened fines for the use of English unregistered trademarks in Quebec.  As a precautionary measure, it may still be advisable to file for English trademarks to avoid the OQFL. If threatened about the legitimacy of whether an English word is a recognized trademark, it is answerable by noting that the English word is the subject of a pending trademark application.   

Under the guise of trying to force French signage, the OQFL is now trying to enforce section 63 of the French Charter which reads, "The name of an enterprise must be in French".

A trade name is the name used to identify a business whereas a trademark is used to distinguish wares or services. Use of a trademark in association with services requires advertisement and availability. A sign in front of a building or on a website is advertisement and the offer and/or online or direct sale is availability.

It is expected the retailers will argue that by changing its policy after so many years, the OQFL is trying to change the law and its interpretation. The French Charter distinguished between trade names (section 63) and trademarks (section 58). The exception for English use was intended for signage. The OQFL is attempting to undermine the intention of its own French Charter.  As well, the OQFL is expecting that brand names such as Costco or Walmart which cannot be translated be amended to include French text (ie. Le Magasin Costco).  This further supports the proposition that the Quebec language watchdog is driven by politics and not the law. As well, trademark legislative powers fall within Federal jurisdiction. This means that strong arguments should be made that the OQFL is attempting to dilute trademarks by requiring the addition of a French component which is outside its jurisdiction.    

It will also be interesting to see if the new interpretation by the OQFL will withstand a challenge of the Canadian Charter of Rights and Freedoms and in particular (s.2(b)), the right to “freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication”.  Assuming a breach of section 2(b) of the Canadian Charter of Rights and Freedoms, the Court will still have to determine if the breach can be demonstrably justified in a free and democratic society (s.1). It is arguable that since section 63 of the French Charter does not preclude other languages from being part of the name, the OQFL will withstand a section 2(b) Canadian Charter of Rights and Freedoms challenge and demonstrated that it is justified in Quebec, to expect a name to include a French component.   

Irrespective of the above, to succeed, the Quebec language watchdog will need to establish that the signage on the outside of a building is used in a trade name sense.  Admittedly, in certain cases, signage on the outside of a business may be used in a trade name sense. However, that same sign will typically also be used in a trademark sense and in most cases, the signage will be used exclusively as a trademark.  So long as the word/logo/design is functioning as a recognized trademark, the trademark should take the benefit of section 25(4) of the French Charter Regulations. Moreover, there is nothing in the French Charter which requires that for the exception to apply that that trademark must be exclusively a trademark.

The 35 year old French Charter should not be interpreted anew to cause English recognized trademarks to have to include a French component when used in signage. Trademark legislation falls with the powers of the Federal government. It is for that reason that the exceptions and intention of the French Charter permit use of recognized English trademarks on both packaging and signage.  If French words are required to be added to trademarks when used in signage then what is next? Will the Quebec language police require recognized English trademarks on packaging to also include a French component? The big brand retailers are attempting to have certainty applied to the law and end the political uncertainty.  

For more information please contact Scott Miller

References:
1 Veuve ClicquotPonsardin v. Boutiques Cliquot Ltee [2006] 1 SCR 824
2 Centre Sportif St-Eustache v. Procureur General Du Quebec (2009) QCCS 3007