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A MONTREAL RESTAURANT MUST CHANGE ITS NAME, BUT NOT BECAUSE IT IS NOT IN FRENCH

By Isabelle Deshaies

Ms. Janie Gosselin of the newspaper LaPresse.ca published a paper, on September 15, 2012, the title of which caught my eyes: « Le bar à sushis Fukyu doit changer de nom » (The Fukyu sushi bar must change its name) (http://www.lapresse.ca/vivre/cuisine/restaurants/201209/15/01-4574418-le-bar-a-sushis-fukyu-doit-changer-de-nom.php)

FUKYU is a Japanese word. I read the article to see if the author was talking about the registration of the name as a trade-mark. In such a case, the owner could continue to use the mark even if it is not in French, since a non French registered trade-mark may (still) be used in Quebec. However, the reason why the owner had to change its name is not by reason of its language.

Indeed, it appears that the problem of the mark is not that it is not French, but how it is pronounced. The neighbors, other business owners, began complaining about the name, fearing that their own business be affected by its negative image when pronounced (“fuck you”).

The owner gently accepted to change the name of his restaurant for KABUKI. But, the question remains as to whether he would still have been able to keep the name if registered under the Trade-marks Act.

The answer is in the Act which prohibits the adoption of a mark or any other name, in connection with a business, that is scandalous, obscene or immoral. According to the Act, “adopting” a mark means to start using it or to file an application to register same.

Therefore, should the owner had refused to change the name, the neighbours would have still been able to ask the Federal Court to enjoin the owner to stop using it under the Trade-marks Act. However, they would have been bound to demonstrate that the name is, indeed, scandalous, obscene or immoral.

Choosing a proper business name or a trademark may be harder than it looks. Calling upon the services of a trade-mark agent like ID^® TRADEMARK may be helpful.

This article does not constitute a legal opinion. Ask your registered trademark agent for more information.

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