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Bulletin

Trademarks and Language: The Potential Impacts Of Bill 96

Fasken
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Intellectual Property Bulletin

In English-speaking North America, Quebec has vigorously fought for the preservation of the French language. The Charter of the French Language (the “Charter”) is the province’s pre-eminent legislative tool in this regard. Since its adoption in 1977, Quebec has periodically tightened its French language requirements, the most recent of which being Bill 96, An Act respecting French, the official and common language of Québec (the “Act”).

Bill 96 was introduced by the Quebec government on May 13, 2021. The Bill proposes significant amendments to the Charter, including in the way it governs the use of French as the language of business and commerce in the province, with particular emphasis on public signage and commercial advertising. If Bill 96 passes in its current form, trademark owners will see their rights constrained in several ways.

The Charter’s Current Requirements

Under the current regime, owners of “recognized trademarks” may display a trademark in a language other than French as long as the trademark is legally recognized as a trademark, and a French version is not registered in Canada.[1] The term “recognized trademark” has been interpreted to include registered or applied for marks in Canada as well as common law marks.[2] The “recognized trademark” exception applies to public signage and commercial advertising in addition to product packaging and labelling, the difference being that a “sufficient presence” of French is nonetheless required on public signs visible from outside of the premises.[3]

What this means in practice is even though the trademark may appear exclusively on an outdoor public sign in a language other than French, some French must still be displayed to inform consumers of the nature of the business. This requirement is commonly met by adding a generic term in French to the non-French trademark, such as “Centre de renovation HARDWARE KING” where “Centre de rénovation” is the generic term and “Hardware King” the trademark. A “sufficient presence” of French implies that French inscriptions must be given permanent visibility (similar to how the non-French trademark is displayed), and they must be legible together with the non-French trademark in the same field of view, without necessarily being side-by-side or of the same size.[4]

In contrast, a “recognized” trademark may be exclusively displayed in a language other than French on product packaging or labelling, without there being a French equivalent or generic term to accompany the trademark.[5] The general rule, however, is that any inscription on a product package or label or on the documentation supplied with the product must be in French, or if other languages are used, non-French inscriptions must not be given greater prominence than those in French.[6]In practice, this means that an English inscription may be equal or less prominent than the corresponding French inscription.[7] Other packaging and labelling requirements apply under the federal product packaging and labelling regime, which are dealt with in greater detail in our companion bulletin.

The Proposed Modifications Under Bill 96

Bill 96 would result in significant modifications to the language requirements relating to public signage and commercial advertising. These will adversely impact trademark owners who benefit from the “recognized trademark” exception under the current regime.

Most importantly, Bill 96 does away with the “recognized trademark” exception in the context of public signage and commercial advertising (the exception remains in place for product packaging and labelling and product documentation).[8] If Bill 96 passes in its current form, non-French trademarks could still be displayed on outdoor and indoor public signs or in commercial advertising, but only those trademarks that are registered marks may be displayed only in a language other than French. In other words, the owner of a common law mark and even perhaps of a mark that has been applied for but not yet registered will no longer be able to rely on the “recognized trademark” exception. As such, unregistered non-French trademarks will need to be accompanied by their French equivalent on public signs and commercial advertising. The French language equivalent will need to be markedly predominant as compared to the non-French language equivalent.

This change will not only affect English language trademarks, but may also affect trademarks that feature words from other foreign languages. For example, some branding exercises will result in choosing a word in a foreign language other than English to create a distinctive trademark. Perhaps some brand owners may even be unaware at this point that their trademark is in a language other than French.

It is also worth noting that the “recognized trademark” exception is available so long as a French version of the mark is not registered. However, under Bill 96, the trademark exception will only be available so long as a French version of the mark does not “appear in the register.”[9] On its face, this wording could potentially be interpreted to also include trademark applications that appear on the register, regardless of whether the trademark has yet to be registered, further restricting the rights of trademark owners.

In addition to the above, a “sufficient presence” of French will no longer be adequate on outdoor public signs. If Bill 96 passes, non-French registered trademarks will need to be accompanied by a “markedly predominant” presence of French.[10] This is defined as a French inscription that is twice as large as its non-French equivalent.[11]Using the above example, this means that the generic expression “Centre de rénovation” will need to be displayed twice as large as the hypothetical registered trademark “Hardware King.”

Lastly, Bill 96 leaves the language requirements with respect to products and product packaging essentially intact, such that trademark owners would still benefit from the “recognized trademark” exception. It is unclear at this point whether once Bill 96 is adopted regulatory changes may be made that would affect the exception for product packaging.

Implications for Trademark Owners

Under Bill 96, a number of outdoor public signs currently in use will fail to meet the proposed requirements. Two main impacts are to be expected.

First, trademark owners currently displaying unregistered trademarks on public signs or in commercial advertising in a language other than French will see their rights affected. Under Bill 96, owners of unregistered trademarks will need to ensure that on public signs and commercial advertising, a French version of their trademark appears alongside the non-French version and be markedly predominant. Concretely, outdoor and indoor public signs, as well as commercial advertising, will need to be replaced with compliant versions. For a number of trademark owners, this may cause a loss of goodwill or distinctiveness brought by the accompanying appearance of a translated version of the trademark, and in the case of outdoor signage, in lettering that is twice as large as the non-French trademark. 

Second, it will no longer be sufficient to accompany a non-French trademark appearing on an outdoor public sign with a smaller but visible generic French term, such as “magasin” or “café.” Such generic terms will need to be displayed twice as large as the non-French (registered) trademark.

It is worth noting that the proposed amendments in relation to public signage and commercial advertising would only come into force three years after the date of assent of the Act.[12] This is important because, with the removal of the “recognized trademark” exception, owners of unregistered trademarks will want to apply for trademark registration to avail themselves of the exception that will be restricted to registered trademarks only. With the current backlog at the Canadian Intellectual Property Office (“CIPO”), trademark applications will likely mature to registration at the earliest 3 years after filing. Given these considerable delays, it might be impossible for some trademark owners to obtain a registration prior to the coming into force of the Act. Owners of unregistered trademarks should consider filing trademark applications immediately in order to increase their chances of aligning issuance of a certificate of registration with the coming into force of these amendments.

Of note in this regard is the expedited examination program recently initiated by CIPO.[13] This program allows an applicant to have their trademark application examined “as soon as possible” provided they can meet at least one of four specified criteria, one of which being the presence of a court action that is “expected or underway in Canada with respect to the applicant’s trademark”.[14] Given such broad wording, it is conceivable that some trademark owners may request expedited examination under the pretext that an OQLF sanction is to be expected in the case of non-compliance. In particular, if a business owner receives a formal notice by the OQLF and fails to comply with such notice within the time indicated, the OQLF may refer the matter to the Québec Director of Criminal and Penal Prosecutions to institute penal proceedings.[15] In this context, a formal notice by the OQLF might suffice in enabling an applicant to obtain expedited examination. It is unclear at this point what position CIPO will take in light of these legislative changes.

Conclusion

In Québec, the Charter already imposes stringent language requirements where trademarks appear on product packaging, public signage, or commercial advertising. The adoption of Bill 96 would result in further language restrictions in relation to public signage and commercial advertising. Faced with these potential amendments, it is imperative for trademark owners to develop an efficient solution tailored to their business goals. To obtain advice on the potential impacts of Bill 96 on your business, we invite you to seek advice from our trademarks team.

 

Special thank you to Paolina Tosheva for her contribution to this article.



[1] Regulation respecting the language of commerce and business, s. 7(4) and 25(4).

[2] Quebec (AG) c 156158 Canada Inc. (Boulangerie Maxie’s), 2015 QCCA 354 at para 106.

[3] Regulation respecting the language of commerce and business, s. 25.1.

[4] Regulation respecting the language of commerce and business, section 25.3; OQLF, “Affichage des marques de commerce – Les obligations des entreprises relativement à l’affichage extérieur d’une marque de commerce uniquement dans une langue autre que le français”, available online: https://www.oqlf.gouv.qc.ca/francisation/entreprises/201610_guide_affichage-marques-commerce.pdf, at p. 10.

[5] Regulation respecting the language of commerce and business, s. 7(4).

[6] Charter, s. 51.

[7] OQLF, “Le français, langue du commerce et des affaires au Québec – Les obligations des entreprises relativement aux produits offerts au Québec”, available online: https://www.oqlf.gouv.qc.ca/francisation/entreprises/20180328_guideproduits-2018.pdf, at pp. 1-2.

[8] Bill 96, s. 47.

[9] Bill 96, s. 47.

[10] Bill 96, s. 48.

[11] Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, s. 1 and 2.

[12] Bill 96, s. 201(5).

[13] CIPO, “Requests for expedited examination” (3 May 2021), available online: www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04946.html.

[14] CIPO, “Requests for expedited examination” (3 May 2021), available online: www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04946.html.

[15] Charter, s. 177.

 

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