Using Unregistered Trade-marks in Quebec

Companies carrying on business in Quebec are required to comply with the Quebec Charter of the French Language. The Charter is designed to promote the French language within the province of Quebec, and as a result the Charter contains de- tailed language requirements for companies carrying on business in that province.  Generally speaking, all printed material used in commerce is required to be displayed in French.  However, the regulations under the Charter provided a specific exclusion for “a recognized trade-mark within the meaning of the Trade-marks Act (R.S.C. 1985, c. T-13), unless a French version has been registered”. As a result, companies with a “recognized trademark”, and without a trade-mark registration for a French version of that mark, were permitted to use the English-only version of that trade-mark.

After some initial uncertainly about the meaning of the term “recognized trade-mark”, the courts in Quebec determined that registration of a trade-mark was not required in order for the trade-mark to be considered a “recognized trade-mark” within the meaning of the Trade-marks Act.

However, in the most recent annotated version of the Charter, the annotations suggest that a more restrictive approach is now being taken, whereby the trade-mark must be registered with the Canadian Intellectual Property Office in order to take advantage of the exception to the general French language requirements of the Charter.  The purported reasoning behind the change in policy is to ensure the application of an objective and uniform standard.

It is important to note that the Charter itself has not been amended, and the annotated version of the Charter has to be reconciled with the existing case law, which holds that the trade-mark does not have to be registered.  It remains to be seen how this will actually play out in the Quebec courts.

In the meantime, however, it is worth noting that it is at least a live issue as to whether a company can use their English only unregistered trade-mark in Quebec, without violating the language requirements of the Charter.  It might be worth considering the possibility of having such a trade-mark formally registered with the Canadian Intellectual Property Office.  In addition to ensuring compliance with the Charter, there are numerous other benefits to having a registered trade-mark rather than relying on an unregistered trade-mark.  For more information on some of the other benefits of trade-mark registration in Canada, please feel free to contact the author of this article for further information.

Paul W. Braunovan is a lawyer and registered trade-mark agent who specializes in trade-mark prosecution as well as opposition, licensing, and infringement matters, and domain name disputes.

This article was first published in the October 2009 edition of the Perlaw Reporter.