Understanding French Language Laws for Startups
Starting a business in the province of Quebec involves complying with specific French language requirements. I’ve had the opportunity to sit down and discuss this often misunderstood subject with Charles Lupien associate at Fasken Martineau. Charles, practices in the fields of technology and intellectual property. He focuses on emerging areas such as e-commerce, web marketing, digital entertainment and virtual worlds. He also advises corporations wishing to do business in Quebec with respect to their obligations under the Consumer Protection Act, the Charter of the French Language and the Fighting Internet and Wireless Spam Act (Bill C-28).
Igor: Say you wish to start a flower distribution website under the name “The Flower Shop” in the province of Quebec. Can you use this brand or do you need to use a French version of this brand?
Charles Lupien: Quebec’s Charter of the French Language requires an equal or predominant use of the French language in several business activities, including commercial advertising, inscriptions on products, brochures and websites. In an effort to make the Charter more palatable to foreign business owners, the legislator provides an exception in the Regulation respecting the language of commerce and business (the “Regulation”) that dispenses business owners from using the French equivalent of a word in relation with certain commercial activities (such as commercial advertising, inscriptions on products, brochures and websites) if the word that is used is a recognized trade-mark within the meaning of the Canadian Trade-Marks Act.
However, please note that the exception contained in the Regulation does not apply to the official name of a corporation listed in governmental registries, which will need to be in French or contain a French qualifier.
Igor: Therefore one would incorporate a company under the name “Les Distributions The Flower Shop” and further obtain a trademark for the expression “The Flower Shop”. How would an entrepreneur go about this?
Charles Lupien: In Canada, there are two ways of obtaining a trademark: registration with the Canadian Intellectual Property Office or continuous use. For registered trademarks, the Regulation provides that where the expression used is a registered trade-mark, it may be used exclusively in a language other than French unless a French version of this trade-mark has been registered. That is why Best Buy™, who owns a registered trademark, does not have to use “Meilleur Achat” in its commercial advertising.
Igor: What about unregistered trademarks?
Charles Lupien: The situation is less clear with respect to unregistered trademarks or trademarks that are in the process of being registered. Despite the fact that the Trade-Marks Act recognizes unregistered trademarks as trademarks, the Office québécois de la langue française took in 2008 the position that unregistered trade-marks and trade-marks that are in the process of being registered should not benefit from the exception provided for in the Regulation and should be translated in French.
However, the Superior Court in Centre sportif St-Eustache c. Québec (Procureur general) reminded that the Court is not bound by the interpretation given to the Charter by the Office and reaffirmed the previous decision rendered by the Court of Quebec in Québec (Procureur général) c. St-Germain Transport (1994) inc., which held that “[TRANSLATION] it is not necessary to register a trade-mark for it to be recognized as a trade-mark.”
In order to be recognized as a trademark, the expression must be used as a trade-mark; that is, used for the purpose of distinguishing the products or services of the owner of the trade-mark from those of others. Proving such use, however, is not always easy. For instance, in Centre sportif St-Eustache c. Québec (Procureur général), the Superior Court, in reviewing a decision of the Court of Quebec, held that a unilingual English company name displayed in front of the appellant’s building which was not directly related to the products or services of the appellant was insufficient to fall under the exception provided for in the Regulation. Also, in Québec (Procureur général) c. St-Germain Transport (1994) inc., the use of an expression indicating the year of manufacture of a vehicle (“Class of 200_”) was deemed insufficient to be qualified as use as a trademark since it described a characteristic of the good being sold.
Igor: What sort of penalties do organizations face for lack of conformity and what are your suggestions to avoid them?
Charles Lupien: In enforcing the Charter, the Office can have penal proceedings instituted against individuals or companies who violate the Charter. All persons found guilty of such an offence risk being fined an amount ranging from $600 to $40,000.
It follows therefore that the most effective way of ensuring that you benefit from the trademark exception provided for by the Regulation is to register your non-French unilingual brand as a trademark with the Canadian Intellectual Property Office. Furthermore, in light of the ambiguity created by the decision in St-Germain Transport, such protection becomes imperative if your trademark may be suggestive of certain characteristics of the goods or services being sold. In short, if you do not wish to use a French trademark you should consider registering your non-French unilingual trade-mark to avoid potential legal proceedings and at the same time benefit from the other advantages associated with registering a trade-mark (advantages that will be outlined in our next article).
That being said, it is important to make sure that the decision not to use a French trademark in Quebec is the best decision to make from a business perspective. The advantages of having one uniform English trademark for all Canada or North America need to outweigh the sometimes negative response of the Quebec consumers to some English trademarks. Some blend in seamlessly (for example, the clothing store Gap) while others have preferred to use a French trademark (for example, the office equipment distributor Staples who is doing business in Quebec under the name Bureau en Gros). It is important to have sufficient market intelligence before taking the decision.
Igor Khananaev is a part-time writer and full-time entrepreneur with successful startups in the sectors of Fashion, Computer repair and Web. Igor has a technical college diploma in Computer Science in 2005 and a Business Administration diploma from Université du Québec à Montréal in 2009. He was selected one of the winners of the 2008 business plan competition at ESG, UQAM. In his spare time Igor can be found administering and coaching Spartans, a Division 2 hockey team, practicing Olympic lifting or deejaying at a friends’ house party. He also claims to be completely terrified of exotic tropical birds.
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