February 11th, 2015

Court clarifies Charter exemption for unregistered trade marks


Twenty English-speaking merchants of Montreal recently contested a charge of non-compliance with the Charter of the French Language, better known as Bill 101. The defence of some merchants prevailed.

In its ruling on the case involving these merchants, the Court of Quebec recognized that an unregistered English trade mark may be used alone (without a French version) on public signs, but the merchant has the burden of proving that the term is a trade mark, which is sometimes a very complex issue of both fact and law.

Public signs and commercial advertising – which also covers commercial web pages – must generally be in French in Quebec and may be in both French and another language provided that French is “markedly predominant”.

However, certain exceptions allow signs to be exclusively in a language other than French, such as in the case of “a recognized trade mark within the meaning of the Trade marks Act”, unless a French version has been registered.

Although a person with a registered trade mark can take advantage of this exception, there has been some ambiguity and inconsistency for several years regarding the status of an unregistered trade mark (also called a common law trade mark). The recent decision of the Court of Quebec now brings a little more clarity in the matter.