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Commercial signs, trademarks, and French generic terms: Need a road map?

By Geneviève Goulet, from our Business Law Group.

November 11, 2016 — Over the past couple of years, the language of commercial signs has been a recurring theme in the media. In April of 2014, the Superior Court rendered its decision in the Best Buy case, ruling that businesses with English-language trademarks could not be compelled to change their signs to add a French generic term — for instance, a descriptive word such as magasin (store) or entrepôt (warehouse) — as requested by the Office québécois de la langue française.

A year later, the Court of Appeal confirmed this decision. Soon after, the Government announced its intention to take action to emphasize French on commercial signs.

This intention has materialized with recent amendments to the Regulation respecting the language of commerce and business and the Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, that are coming into force on November 24.

What are the consequences of these amendments for businesses operating in Quebec? Let’s have a brief look.

Does this concern my business?

The new regulation applies to every enterprise doing business in Quebec that displays a trademark in a language other than French.

More precisely, the focus of the Government’s action is essentially trademarks that, as the Court of Appeal explained, “incorporate English words (‘Guess’, ‘Curves’), combinations (‘Best Buy’, ‘Old Navy’ or ‘Banana Republic’) or blends (‘ConnectPro’, ‘Walmart’) of such words” [our translation], without French generic or descriptive terms.

However, the Act provides that an English family name in a trademark will not, by itself, raise a red flag.

If your trademark comprises no element in a language other than French, the amendments should have no impact on you.

Do I have to adopt a new trademark?

No. The new rules only apply to signs and posters outside a building. You do not have to replace your letterhead and printed supplies or your website. No change is required either if your trademark appears on your company’s vehicles or on the staff uniforms.

The new rules apply to “the signs or posters related or attached to an immovable”. If your business is in a space inside a shopping centre, the new rules will also apply to the posters and signs outside the space: in the hallway, for instance.

What must I do to comply with the new rules?

If your trademark causes the new rules to apply, you must make sure that there is a “sufficient presence of French” in your outside display.

You must add to your outside display a generic term or a description of your goods and services, or a slogan in French. This new sign or poster will have to be designed and lighted to make it easy to read and be located in the same visual field as the trade mark sign or poster.

For instance, if you operate a fruit and vegetable store under the trademark “Harvest Time”, and your signs currently display only that name, you could add the generic “Produits maraîchers” (“Produce”), or enhance it with a French slogan, such as “Comme avoir son propre potager” (“Like having your own garden”). The added element does not have to be in the same place as the trademark, but both should be legible at the same time.

Are there any administrative steps to take?

No. You do not have to register the generic term that you add with your trademark — although you could, if you want the newly coined expression to receive protection under the Trade-marks Act. No government agency has to be notified.

When must I change my display?

Your current display will have to be consistent with the new rules on November 24, 2019 at the latest. However, if you install a new sign or replace an existing sign after November 24, 2016, you will have to abide by the new rules.

What if I have questions?

That is quite understandable, if not inevitable: this brief newsletter is only a glimpse into a very complex question.

For more information on the impact of these new rules on your business, or for any question related to display issues related to the Charter of the French Language, do not hesitate to contact the author.

Click here for a PDF version of this text.

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