Changes to Trademark Requirements In Quebec (Quebec Bill 96)

Are you a company operating in the province of Quebec using trademarks?

Do you have a registered trademark, a trademark application pending, or a common law mark and are looking to do business in Quebec?

If so, you must read this article on the changes that are coming with respect to the use of non-French trademarks in Quebec.

At this moment, Quebec laws allow for the display of "recognized trademarks" in a language other than French, provided that they are either a registered trademark in Canada, there is a trademark application pending, or are common law marks.?

For example, companies can display their registered or common law marks, such as a company logo, in English on product packaging sold in Quebec without the need for a French translation.

However, with the introduction of Bill 96, the Quebec government is making changes to the current trademark regime.

Bill 96 will introduce new requirements having an impact on trademarks that will be exempt from translation into French.

Let’s look at the new requirements set out in Bill 96.

Translation Requirements of Non-French Trademarks

The implementation of Bill 96 in Quebec will impact the trademark rules that currently allow the display of “recognized trademarks” in their original language, which is not French.

Further to the new legal requirements, only non-French trademarks that are duly registered under the Trademarks Act can benefit from the “recognized trademarks” exemption.?

This means that common law marks or marks which are the subject of pending trademark applications will no longer be eligible.?

Furthermore, if an eligible registered trademark includes a "generic term or description" of the product, the generic term or description must be translated into French and displayed elsewhere on the product, ensuring permanent visibility and readability.?

Let’s look at what this means for commercial advertisements, signs and posters visible from outside premises, and the use of generic and descriptive terms in languages other than French.

Public Signs, Posters, and Commercial Advertising

Section 58.1 of the Charter of the French language introduced by Bill 96, the Quebec government introduces a new provision relating to the exception for public signs, posters, and commercial advertising.

Accordingly, a trademark can be displayed only in a language other than French in public signs, posters, and commercial advertising, without a French version, provided that two specific conditions are met.?

The first condition is that the trademark should be registered under the Trademarks Act.?

The second condition is that there should be no corresponding French version of the trademark in the Trademark Register.

If your trademark does not fulfill these two requirements, it must consequently contain a French version that appears in the public sign, poster, or commercial advertising in a "markedly predominant" manner.

Public Signs and Posters Visible From Outside Premises

Another element that will be impacted is the use of "public signs and posters visible from outside premises".?

This includes any sign outside a "space, closed or not, devoted to an activity," as well as any sign placed inside a premise with the intention of being seen from the outside.?

For public signs and posters visible from outside premises, the French language must be displayed in a "markedly predominant" manner, even if the trademark displayed is duly registered.?

Previously though, the requirement was to have a "sufficient presence of French."?

In essence, for any trademarks that are in a language other than French or business names that include expressions in languages other than French, this new requirement to display the French in a “markedly predominant” manner will apply.?

As per the Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, you can satisfy the “marked predominance” of French by writing the French text with a much greater visual impact than the text written in the other language.?

Generic and Descriptive Terms

Bill 96 also impacts the use of any generic or descriptive terms in a trademark that is not in French.

You must now translate into French any generic or descriptive terms used in your trademark.??

In other words, even if you have a registered trademark with the Canadian Intellectual Property Office (CIPO) in a language other than French, the use of untranslated generic and descriptive terms on products is no longer allowed.?

The Charter of the French language further requires that the translation should appear on the product, but it must be permanently attached to the product or displayed on a medium attached to it.?

“Sufficient Presence” to “Markedly Predominant”

The current exception for "recognized trademarks" in Québec permits the use of English on commercial advertising, public signs, and product packaging or labeling provided that there is no corresponding French version registered.?

Nonetheless, you must present the French version of your trademark with “sufficient presence” when advertising outside a premise.?

However, Bill 96 aims to change the current standard of a "sufficient presence" to a higher standard of a "markedly predominant" presence of French.?

Based on the new Bill 96 requirements, you can only display non-French trademarks on public signs and posters visible from outside premises if the trademark is registered under the Trademarks Act and must not have a corresponding French version.

In essence, you can no longer display a non-French version of a common law mark or marks under a pending application without a corresponding French translation.

Additionally, Bill 96 requires that the French be markedly predominant on public signs and posters that are visible from outside premises if there is a non-French trademark.?

The same standard applies if the advertising includes the enterprise's name and an expression in a language other than French.

Takeaways?

Bill 96, An Act respecting French, the official and common language of Québec, SQ 2022, c 14, received Royal Assent on June 1, 2022, and will come into force on June 1, 2025.

Businesses should take notice of the coming changes, particularly as they relate to the use of non-French trademarks in Quebec.?

Bill 96 requires that only non-French trademarks that are registered under the Trademarks Act benefit from the “recognized trademarks” exemption allowing them to be presented in their original language.?

Furthermore, if an eligible trademark includes a "generic term or description" of the product, the generic term or description must be translated into French.?

Keep in mind that it may take the CIPO two to three years to process a trademark registration application.?

As a result, it’s worth looking into your trademark portfolio to ensure that you take the necessary measures to protect them before the Bill 96 requirements come into effect.

If you have any questions, don't hesitate to reach out!

Good luck!