Charter of the French Language: Reality Check on Bill 96 and its Impacts on Trademark Use in Québec
On June 1, 2022, Bill 96, an Act respecting French, the official and common language of Québec, was sanctioned by Québec. Bill 96 amends several laws in Québec, especially the Charter of the French Language. The purpose of Bill 96 is to improve protection of French in the Canadian province of Québec. This objective is certainly commendable as French language is under pressure and considered to be losing ground to English, especially in Montreal.
Many individuals and organizations filed briefs commenting on Bill 96, and the Minister of Justice presented the Bill and answered questions during committee hearings held during winter 2021-2022. The Minister even made amendments to the Bill during these hearings, including one on trademark use on product packaging that will further affect trademark use in Québec.
While protecting French is certainly an important objective, we wonder whether the changes affecting trademark use in Québec will achieve this purpose. Some of the changes are unclear, and the wording of new provisions seems to be in contradiction with comments made by the Minister of Justice during the committee hearings. Changes to trademark use are not in force yet – they will come into force on June 1, 2025 – and we are expecting the government to publish new regulations that, we hope, will clarify some of these changes, but, in the meantime, here are our thoughts.
Change to the Trademark Exception
The current trademark exception allows businesses to use a “recognized”, i.e., registered or unregistered, non-French mark without translation, whether on products/packaging, in commercial publications (including websites) or in public signage/commercial advertising. However, the exception does not apply if a French version of the mark has been registered.
Marks will have to be registered. Under Bill 96, the trademark exception will no longer apply to unregistered marks, on “products” and in public signage/commercial publications. Businesses will only be able to use non-French marks if they are registered with the Canadian Trademarks Office.
But how does it protect French? This new requirement is clear. The mark is either registered or not. However, how this new requirement will help protecting French language is unclear. More specifically, what difference will it make for a consumer if the mark appearing on the product or in public signage is registered or not? This more stringent requirement rather seems to facilitate the identification of trademarks that can benefit from the exception. In fact, the Office Québécois de la langue française (OQLF), the governmental body in charge of overseeing the Charter of the French Language, decided over a decade ago that it would interpret the current trademark exception as applying to registered marks only, despite court decisions to the contrary. This new requirement may be to put a stop to the debate of determining if a mark is “recognized” or not. It will surely facilitate the task of the OQLF. However, the purpose of Bill 96 should not be about making the trademark exception more easily applicable, but rather to protect the French landscape in Québec, and this change seems to do little in that regard.
Administrative Hurdles. Further, the inconvenience for businesses outweighs the logistical benefit of new trademark exception. Registering a trademark is not mandatory in Canada – but this new requirement makes it mandatory for non-French marks used in Québec. The registration process is extremely long in Canada (currently up to close to four years before examination), and uncertain. While a straightforward registration is not very expensive, seeking to overcome hurdles raised by the Trademarks Office can be. For example, a registration may be blocked by conflicting marks, whether registered or previously filed and still pending, which may require extensive arguments with the Trademarks Office or the commencement of non-use cancellation proceedings to clear the path, all of which can be costly when an applicant may opt to rely on its unregistered trademark rights.
A French version “must not appear on the trademarks Register”. The current trademark exception clearly provides that to be able to use a mark in a language other than French exclusively, a French version must not be registered. If a French version has been registered, then the business cannot use the non-French version exclusively. The new trademark exception changed the wording to rather provide that to benefit from the exception, a French version must not appear on the Register kept under the Trademarks Act. We believe that this still means that a French version must not be registered because the Register contains registered marks, as provided by section 26 of the Trademarks Act, and confirmed by caselaw (contrary to the trademarks database that also contains all pending or abandoned applications, and expunged registrations). But why change the wording? Is the intent to cover more than registered marks (i.e., pending applications or even expunged registrations?), and if so, will the OQLF argue that a business cannot use exclusively a non-French mark merely because an allegedly French version appears in the trademarks database? We hope this change is benign and that the OQLF will not interpret it as including more than registered marks.
Trademark used on Products
In a surprising amendment made during the Bill 96 hearing, the Minister added a new requirement for trademark use on products, as shown in new section 51.1:
51.1. Despite section 51, on a product, a registered trademark within the meaning of the Trademarks Act (Revised Statutes of Canada, 1985, chapter T-13) may be drawn up, even partially, only in a language other than French where no corresponding French version appears in the register kept according to that Act. However, if a generic term or a description of the product is included in the trademark, it must appear in French on the product or on a medium permanently attached to the product.
Firstly, this new provision adds the requirement for non-French marks to be registered (as discussed above). But it also adds that if a generic term or description of the product is included in such registered mark on products, then the generic or description must also appear in French on the product or on a medium permanently attached to it. Unfortunately, the explanations provided by the Minister during the Bill 96 hearing do not help in understanding the scope of this new provision, and the latter is far from being clear.
Despite section 51? Section 51 reads as follows:
51. Every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French. This rule applies also to menus and wine lists.
The French inscription may be accompanied with a translation or translations, but no inscription in another language may be given greater prominence than that in French or be available on more favourable terms.
It is not clear what in section 51 may be disregarded by the beginning of section 51.1 (“Despite section 51…”). Is it only to disregard that every inscription must be in French (the registered trademark exception)? Or is it also to disregard the prominence of French? As we can see from the below, this uncertainty has important repercussions.
“Product”? The new requirement only mentions that it applies to “product”, and not to product, on its container or on its wrapping, or on a document or object supplied with it as listed in section 51. However, during the Bill 96 hearing, the Minister supported the proposed change with an example of a bottle of liquid soap (from our search in the Trademarks database, the closest image located was for this mark):
The Minister argued that businesses were using trademark registrations of whole labels to try to avoid translation requirements. Under the new requirement, the Minister argued, all text that appears on the label above except SOFTSOAP must be translated into French. But his example clearly refers to the product’s packaging, not the product itself. So, it is restricted to products? Or does it include packaging, etc.?
In our view, considering the Minister’s comments and the goal of the amendment, it should apply not only to the product itself but also to its packaging. This is also the OQLF’s position. We note that the new provision is inspired by the current trademark exception provided in section 7 of the Regulations on the Language of Commerce and Business. The exception does mention that a recognized trademark “on a product” can be exclusively in another language than French. However, this Regulation also provides in its section 1 that for the purposes of the section relating to products, unless the context indicates otherwise, any provision applicable to an inscription on a product also applies, with the necessary modifications, to an inscription on its container or wrapping or on a leaflet, brochure or card supplied with it. It may therefore be that when preparing this suggested amendment drafters were inspired by section 7 of the Regulation but mistakenly omitted the precision in section 1. This possible omission however raises interpretation issues that we hope the government will quickly clarify or correct.
What is generic or descriptive? Another important issue is what the OQLF will consider something to be generic or, even more difficult, a description of the product. Several marks contain suggestive text, without being descriptive. We anticipate several debates over the extent of what is descriptive, unless the new regulation provides more clarity.
And descriptive of what? Further, as mentioned above, the provision refers to a generic or description of the “product”. But what if the descriptive refers to something else than the product, such as the packaging (e.g., Made of Recycled Materials)? Or the company (Established in 1903)? A strict reading of the provision seems to be limited to the product. But the Minister’s comments seem to aim at a broader interpretation. Again, let’s hope that the government will quickly clarify or correct this.
Size of French translation? Section 51 clearly provides that French inscription may be accompanied by a translation, but no inscription in the other language may be given greater prominence than that in French. Section 51.1 provides that if a generic term or a description of the product is included in the trademark, it must appear in French on the product or on a medium permanently attached to the product. It is not clear if French has to meet the prominence requirement of Section 51 because of the word despite at the beginning of section 51.1. There is a separate article in the Charter (section 91) that provides that where the Charter authorizes the drafting of texts or documents both in French and in one or more other languages, the French version must be displayed at least as prominently as every other language. However, shouldn’t the more specific rule of section 51.1 prevail? The OQLF takes the position that the text in the other language in the registered mark cannot be more prominent than French. However, the wording of new 51.1 leads us to believe that despite that rule, French will have to be added, without restrictions as to size. Moreover, a requirement for the French translation to be as prominent as the non-French text in the registered mark could mean that the French descriptive or generic text should be shown in the same format (i.e., as a logo) as the trademark to have the same visual impact. But the new requirement is not to provide a French version of the registered mark, as this would render useless the revised trademark exception. Considering the purpose of this new requirement, if a French translation of the text appears somewhere else on the product or its packaging, even if smaller in size, then the requirement should be met. Again, let’s hope that the new Regulation will clarify this.
What about descriptive marks that have acquired distinctiveness? Under the Canadian Trademarks Act, a clearly descriptive mark may be registered if the applicant can show that the mark has been so used and advertised that it has acquired distinctiveness. Under new section 51.1, the text of the mark may have to nonetheless be translated into French. Again, let’s hope that the new Regulation will clarify if the new requirement applies to these marks.
Trademark Use on Public Signage and Commercial Advertising
Bill 96 added the requirement for trademarks on public signage and commercial advertising to be registered (as discussed above). However, it also added the requirement for non-French trademarks on exterior signage (e.g., storefront signage) to be subject to the markedly predominant rule:
58.1. Despite section 58, on public signs and posters and in commercial advertising, a trademark may be drawn up, even partially, only in a language other than French, provided the trademark is registered within the meaning of the Trademarks Act (Revised Statutes of Canada, chapter T-13) and no corresponding French version appears in the register kept according to that Act.
However, on public signs and posters visible from outside premises, French must be markedly predominant where such a trademark appears in a language other than French.
Currently, French text on public signage and commercial advertising must be markedly predominant (for example, twice the size) compared to text in other languages. That being said, the Regulation on the meaning of “markedly predominant” (Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language) provides that a recognized trademark must not be considered when assessing the markedly predominance of French text. In other words, the trademark can be larger than the French text. The new requirement in paragraph 58.1(2) obviously changes that since all text surrounding the trademark will have to be markedly predominant compared to the non-French trademark. This Regulation will therefore also need to be amended.
This new change may not raise an interpretation issue, but rather raises practical issues.
Aesthetics. Since 2016 (with a phase-in period to 2019), businesses were required to add a sufficient presence of French (such as descriptive text or a slogan) without a size requirement on their storefront signage if they were using a non-French mark. A few years later, they would now have to redo their signage to increase the size of the French text. Under the current markedly predominant assumptions, the French text could have to increase to twice the size of the trademark. The result would mean that the trademark would be dwarfed compared to the French descriptive text or slogan, which in our view could mean that storefront signage with non-French marks could be hideous – not to mention that it could also affect the purpose of the mark since consumers may not recognize the identity of the store. Let’s hope that the changes to the Regulation on the meaning of “markedly predominant” will list more examples on how businesses can comply with the markedly predominant requirements.
What about municipal requirements? In addition to provincial laws, storefront signage must comply with the requirements of the municipalities where they are located. When municipal regulations are updated, businesses’ current storefronts may avoid the need to change, as they are grand-fathered. However, if they make a change to their signage, then they may lose protection under the grand-fathered clause. The changes brought by Bill 96 are silent on such grand-father clauses. Let’s hope that the new regulation will address this issue.
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The new regulations were expected to be published for comments before the end of 2022. Perhaps they are being delayed because the Québec government has realized that many uncertainties were created by Bill 96 on trademark use in Québec. We understand that businesses, trade organizations and trademark practitioners’ associations are in discussions with the Québec government on these issues. Let’s hope that the government will not only listen but also act to clear up these uncertainties and issues.
When Bill 96 was sanctioned, businesses had 3 years to comply. The uncertainties make it very difficult if not impossible for businesses to comply. As of now, over 8 months have passed and the uncertainty remains. The more businesses remain in the dark the harder it will be for them to comply by the June 1, 2025 deadline. Unless the government wants to see a shortage of products on the Québec shelves on June 1, 2025, it could be well-advised to suspend the coming into force of the new requirements.
