In approximately three years or less, the Québec Government’s newly adopted Bill 96, An Act respecting French, the official and common language of Québec will go into force. Bill 96 will have a significant impact on the use of English trademarks in the Province of Québec. For example, whereas in the past, both unregistered and registered trademarks did not need to be translated into French, under Bill 96, only registered trademarks will be exempt from translation into French. Currently, it takes approximately two years for a trademark application to mature to registration in Canada. As such, it is imperative businesses review their trademark portfolios and consider which trademarks ought to be filed for registration to ensure continued use in the Province of Québec.
The Present Rules in Québec:
Promotional Material - Packaging
At
present, a “recognized trademark” is exempt from translation requirements in Québec.
A recognized trademark includes a registered trademark, an applied-for
trademark with a pending application, or a common law trademark. As such,
unless the English trademark has been registered in French, it is not necessary
to translate the English trademark registered or common law (unregistered) on
packaging offered in Québec into French.
Signage
Currently, in Québec, outside signage, inside signage that is seen outside, mall signage and/or signage on a pole/column (with some exceptions) displaying an English registered or common law (unregistered) trademark does not need to be translated into French. However, if the equivalent French trademark is a registered trademark, then the French trademark must be used on the signage. In any event, if there is only an English trademark, unlike packaging or promotional material, the signage must have “sufficient presence” in French and include: [1]
• A generic term or a description of
the products or services;
• A slogan; or
• Any other term or indication favouring
the display of information pertaining to the products or services to the
benefit of consumers or persons frequenting the site (location).
The “sufficient presence” of French means that it should be displayed with permanent visibility and legibility in the same visual field as the non-French mark, although not necessary to be present side-by-side, in the same number, in the same materials or in the same size.[2]
Exception: If the English trademark is displayed on a pole/column and there are more than two trademarks on the pole/column then the signage does not need to disclose the generic term, slogan or other terms in French. The typical situation would be the external signage of the parking lot entrance for an outdoor mall.[3]
Bill 96 – New Requirements in Québec for French in Trademarks:
When
Bill 96 goes into effect, the scope of the “recognized trademark” exemption is
greatly reduced.
First, only non-French registered trademarks will be exempt and not need to be translated into French. As such, an unregistered (i.e., applied-for or common law) English trademark will need to be accompanied by its French equivalent on commercial advertising and public signage.
Second, even if a non-French trademark is registered but is used on public signs and posters visible from the outside of a premise, the signage must still have a generic term, slogan or other term in French marked predominately in French. [4] Predominantly means that the space allotted to the French text must be at least twice as large as the space allotted to the non-French text, or the characters used in the French text must be at least twice as large as those used in the non-French text.[5]
Implications of the New Québec Language Laws:
It
is expected that the newly adopted Québec language laws will be in force in
three years or less. Currently, it takes
approximately two years for a trademark application to mature to registration
in Canada. As such, if you offer goods and/or services in Québec and do not
want to run afoul of the new Québec language laws, then it is imperative for you
to review your trademark portfolios and consider a tailored solution to meet
your business goals (for example, filing trademark applications with the
Canadian Intellectual Property Office immediately).
Notably, these implications may not only affect English language trademarks but also trademarks using other non-French languages and potentially “coined” words.
For expert assistance with any issues pertaining to Trademarks, please reach out to MBM for a free consultation:
Scott
Miller, Co-Managing Partner, Head of the Litigation Department
T: 613.801.1099
E: smiller@mbm.com
Fanqi (Grace) Wang, Associate Lawyer
T: 613.801.1072
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.
[1] Regulation
respecting the language of commerce and business, CQLR c C-11, r 9, ss
25(4) and 25.1.
[2] CQLR c
C-11, r 9, s 25.3.
[3]
CQLR c C-11, r
9, s 25.2(1).
[4] Bill 96, An
Act respecting French, the official and common language of Québec, 1st
Sess, 42nd Leg, Québec, 2021, cl 47 (assented to 1 June 2022).
[5] CQLR c
C-11, r 11.
