differences in the civil law system

DIFFERENCES IN THE CIVIL LAW SYSTEM OF THE PROVINCE OF QUEBEC
Hugues G. Richard*
LEGER ROBIC RICHARD, Lawyers,
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria- Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 - Fax (514) 845 7874
www.robic.ca - [email protected]
Out of the ten provinces of the Canadian Confederation, Quebec can be
singled out as being different in many ways. While in the other provinces the
common law governs the relationship between persons within each province,
in Quebec the Civil Code1, inspired by the law of France, applies. This major
difference has consequences, inter alia, with respect to the laws governing
contracts, torts and property.
Under the Civil Code of the Province of Quebec, a trademark is considered
as an incorporeal moveable property. Unless otherwise provided for by
agreement between the parties, such property is governed by the law of the
domicile of its owner. But the law of the Province of Quebec is applicable
whenever the question involved relates to the nature of the property and to
the jurisdiction of the courts and procedure2.
While it is possible for parties to a license agreement to elect domicile in a
foreign jurisdiction and to determine the law under which the agreement
will be governed, it must be remembered that the courts of the defendant
party are often the only courts able to issue effective injunctive orders against
the defendant and to award damages to the plaintiff. For instance, a
judgment rendered in California cannot be enforced in Quebec unless
confirmed by a decision of a Quebec court recognizing the foreign
judgment.
If a United States licensor agrees to be subject to the juris-diction of Quebec
courts, but insists on having the laws of the licensor's domicile govern the
interpretation of the agreement, the licensor may be creating difficulty for
© LEGER ROBIC RICHARD / ROBIC, 1988.
*Lawyer and trademark agent, Hugues G. Richard is a senior partner in the lawfirm LEGER
ROBIC RICHARD, g.p. and in the patent and trademark agency firm ROBIC, g.p. (1988), 78
Trademark Reporter 252-255. Publication 28.
1Code of Civil Procedure, Sections 751 to 761.
2Code of Civil Procedure, Sections 733 to 740.
itself by having to prove the applicable United States law. In the context of
interlocutory proceedings, the necessity of making such proof can make the
difference between winning or losing, or determine whether such
proceedings can be instituted in a timely fashion.
In the Province of Quebec, provisional orders for interlocutory injunctions can
be obtained rapidly from Superior Court Judges sitting in chambers. These
injunctions are normally valid for ten days and can be renewed until the
interlocutory injunction proceedings are heard. An order granting an
interlocutory injunction is valid until judgment on the merits.
In case of
breach of a licensing agreement, it is of interest to note that if the license
agreement stipulates that the ownership of copyright in designs or written
material exists in favor of the licensor or if ownership in tangible assets in
possession of the licensee is in the licensor, all infringing copies of the designs
or of the written material and the tangible assets can be seized by the
licensor before judgment. These seizures can be obtained ex parte3. This
possibility of seizing before judgment goods which are alleged to be owned
by the licensor or infringing copies of works protected by copyright owned by
the licensor is unique to the Province of Quebec.
The Province of Quebec has enacted a law to protect and encourage the
use of the French language in its territory; it is entitled the Charter of the
French Language4. A license agreement executed in the Province of
Quebec can be written in English or in French. If written in English, in certain
circumstances, in one of its paragraphs the contract should state in the
French language that the parties have expressly asked that the contract be
written in English5.
The Charter states that subject to certain exceptions, "signs and posters and
commercial advertising shall be solely in the French language6." As far as
trademarks are concerned, regulations enacted under the Charter have
stated that those trademarks adopted before the coming into force of the
Charter (August 26, 1977) which were in a language other than French could
be continued to be used.
Certain aspects of the Charter are presently
before the Supreme Court of Canada for adjudication of their constitutionality7.
As a consequence of this, it is generally considered that new trademarks
introduced on the Quebec marketplace must not be in a language other
3RSQ 1977 c. C-11.
4Id. Section 55.
5Id. Section 51.
6Regulation respecting the language of commerce and business, RRQ c. C-11, r. 9, art. 16.
7For example, La Chaussure Brown's Inc. v. Le Procureur Général du Québec (unreported,
Québec Court of Appeal, December 22, 1986).
than French. This has caused American manufacturers to translate into
French many of their new trademarks. Example include: CABBAGE PATCH
DOLLS/POUPEES BOUT DE CHOIX, CARE BEARS/CALINOURS, MY LITTLE
PONY"MA PETITE POULICHE8.
Licensing in Quebec is therefore in some respects different from what it is
within the rest of Canada. Most of these differences can be dealt with
through a careful selection of trademarks and a properly drafted licensing
agreement9.
868 TMR 56 (1978) and 70 TMR 339 (1980).
9Since the foregoing notes were written, the Canadian government has announced its
intention to eliminate the registered user system. However, it is not yet clear if the scheme will
be abolished and, if so, how licensing will be controlled under the statute. By the Editor,
Sheldon Burshtein.
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué
depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous les
domaines: brevets, dessins industriels et modèles utilitaires; marques de commerce, marques
de certification et appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits
voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies,
pharmaceutiques et obtentions végétales; secrets de commerce, know-how et
concurrence; licences, franchises et transferts de technologies; commerce électronique,
distribution et droit des affaires; marquage, publicité et étiquetage; poursuite, litige et
arbitrage; vérification diligente et audit; et ce, tant au Canada qu'ailleurs dans le monde. La
maîtrise des intangibles.
ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the
protection and the valorization of all fields of intellectual property: patents, industrial designs
and utility patents; trademarks, certification marks and indications of origin; copyright and
entertainment law, artists and performers, neighbouring rights; computer, software and
integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets,
know-how, competition and anti-trust; licensing, franchising and technology transfers; ecommerce, distribution and business law; marketing, publicity and labelling; prosecution
litigation and arbitration; due diligence; in Canada and throughout the world. Ideas live
here.
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