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Quebec's language rules to supplement Best Buy decision

Although major retailers won a court battle in April allowing them to keep their English names in Quebec, news that the government will “tighten” the Charter of the French Language by implementing new regulations will require retailers to add a French descriptor to English trademarks, says Toronto intellectual property lawyer Taras Kulish.

In Québec (Procureure générale) c. Magasins Best Buy ltée, 2015 QCCA 747 (CanLII), the decision of the Court of Appeal, affirming the lower court decision, made it clear that the Charter of the French Language permits the use of an English mark in Quebec provided there is no equivalent mark registered in French, says Kulish, a bilingual trademark lawyer who graduated from McGill University’s National Programme.

“Essentially, the Best Buy case determined that corporations that use registered English marks in Quebec do not need to add generic or specific terms in French to their trademark, notwithstanding the seemingly conflicting regulation concerning the language of commerce and business which stipulates that ‘An expression taken from a language other than French may appear in a firm name to specify it provided that the expression is used with a generic term in the French language,'” he tells AdvocateDaily.com.

Kulish, a lawyer with Steinberg Title Hope & Israel LLP, notes this situation is about to change with the province’s announcement that it intends to modify the regulation respecting the language of commerce and business.  

He explains the Best Buy decision will stand but new changes to the Charter of the French Language will soon require that a French description, generic term or slogan accompany English trademarks.

"The government hopes to frame the regulation not as a change to trademark law, which is federal competence, but as a commerce issue, which is provincial competence," he says.

A CBC article from earlier this year quoted Culture Minister Hélène David as saying: This fall, our government will propose amendments to the regulations respecting the language of commerce and business. This is intended to ensure a permanent and visible presence of French on the exterior of storefronts."

The CBC reports that David, who is also in charge of the province's French language charter, says there will be no requirement to translate the trademark but rather adding inscriptions in French that can take the form of a description of products or services, a slogan or the addition of a generic word.

David told the CBC she anticipates the new rules to be in place by 2016.

Kulish says the Quebec government’s plan to amend the regulation is an attempt to ensure that the French language will be present on exterior signs and facades to better reflect the French face of Quebec.

However, in light of the Quebec Court of Appeal’s decision in Best Buy, what does this mean for the government’s rule changes?  

“It certainly will not be easy for the government,” says Kulish, a member of the Bars of Quebec, New York and Ontario. “It’s unclear without seeing the wording of the amendments to the regulation, but the Quebec government proposes to make these changes using its constitutional powers to regulate commerce in Quebec.

“As long as the Quebec government stays within its constitutional competencies and puts in place regulations relating to commerce, it will be able to bring the changes it desires,” he adds.

However, Kulish is certain there will be litigation as a result of these new rules.

“It is inevitable,” he tells the online legal publication. “It is just the nature of the process of defining language rights in Quebec. Unfortunately, businesses from outside of Quebec are caught in the middle, but they will have to adapt.”

He notes that most companies are already compliant with what the new regulations would propose and some major companies have wisely adapted in advance of the new regulations, using a French descriptor or generic term with their trademark. Examples, include Café Starbucks, Boutique Spring, Mise en forme Econofitness and Crate & Barrel maison.

Kulish says it’s uncertain but possible that these eventual regulations will have the effect of diluting trademarks and their resulting goodwill.

“Whatever happens, this issue was not put to bed by the Quebec Court of Appeal in the Best Buy case. History tells us that we will be dealing with French language issues with respect to English trademarks for many years,” he says. “In the meantime, companies doing business in Quebec need to brand themselves cleverly so that they create goodwill in that province and do not fall flat on their face through missteps or mistranslations.”

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