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21 October 2013
On September 20 2013 the International Trademark Association (INTA) – an international non-profit association of trademark owners, professionals and academics – was granted leave by the Quebec Superior Court to intervene in a declaratory judgment proceeding pertaining to the interplay between the Quebec Charter of the French Language and trademarks.
In Quebec, the charter requires that public signs and commercial advertising be predominantly in French, while providing an exception for "recognized trade-marks". Until recently, the Office québécois de la langue française (OQLF) – the body in charge of applying and enforcing the charter – allowed businesses to use their registered trademarks, regardless of their language, on signs outside their premises, consistent with the trademark exception.
However, in 2011 the OQLF adopted a new policy, without any legislative change, in which it specified that for storefront signs, the law pertaining to trade names now applied to trademarks, whether registered or not. In other words, any trademark appearing on a public sign on a building was now considered to be a trade name use and the trade name rule requiring their translation into French or the addition of French generic language applied.
In October 2012 seven retailers – Best Buy, Costco, Gap, Old Navy, Guess, Walmart and Toys R Us – filed a joint motion for declaratory judgment in the Quebec Superior Court, arguing that the OQLF was misapplying the charter and its regulation by confusing trade name use with trademark use, and that its existing position conflicted with previous policy statements.
INTA, which advocates for the support and advancement of trademark law around the world, sought leave to intervene in the proceedings to raise important trademark law issues and policies. In particular, it is INTA's position that the OQFL is blurring the line between trademarks and trade names and that forcing trademark owners to add French generic language to their signs puts their trademark rights at risk.
The case will be heard on the merits by the Quebec Superior Court during October 2013.
For further information on this topic please contact Jean-Sébastien Dupont at Smart & Biggar/Fetherstonhaugh's Montreal office by telephone (+1 514 954 1500), fax (+1 514 954 1396) or email (email@example.com). Alternatively, contact Philip Lapin at Smart & Biggar/Fetherstonhaugh's Ottawa by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email (firstname.lastname@example.org).
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