On May 24, 2022, the National Assembly of Québec adopted Bill 96, An Act respecting French, the official and common language of Québec (“Bill 96”), which received assent on June 1, 2022. Bill 96 amends the Charter of the French Language (the “Charter”) and other related statutes. Some provisions of Bill 96 came into force on June 1, 2022, whereas other provisions will come into force on a staggered basis until June 1, 2025.
The purpose of the Charter, as set out in its preamble, is to make French the language of the government and law, as well as the normal and everyday language of work, education, communication, commerce and business. The Charter was adopted in 1977. Its stringent rules regarding use of the French language in Québec existed long before Bill 96 was tabled in May 2021.
The modifications under Bill 96 will have noteworthy impacts on the use of trademarks on (a) product labelling and packaging, and (b) public signage, which we will cover in this newsletter. These amendments will come into effect on June 1, 2025.
Bill 96 also introduces several amendments applicable, without limitation, to the language of the courts, the language in the workplace, the language of contracts between private parties and the relations with the civil administration, which are not covered by this newsletter.
The current rules
The Charter provides the obligation to use French as the usual language of commerce and business in Québec.
Product labelling and packaging
Without limitation, 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. Moreover, regardless of the medium used, catalogues, brochures, folders, commercial directories, order forms and any other documents of the same nature that are available to the public and any similar publications (such as websites and social media posts) must be drawn up in French.
In all these instances, it is possible to have, as applicable, inscriptions in another language or a version in another language, provided that they are not given greater prominence than that in French or be available on more favourable terms.
There are a few limited exceptions to these obligations, set out in the Regulation respecting the language of commerce and business (the “Regulation”). The most important of these exceptions is that a recognized trademark, within the meaning of Canada’s Trademarks Act, may be exclusively in a language other than French, unless a French version has been registered. Courts have decided that any trademark, whether registered or not registered (i.e. common law mark) can benefit from that exemption.
Public signage and commercial advertising
The current principles are more tricky for public signage and commercial advertising, which need to be in French. They may also be both in French and in another language provided that French is “markedly predominant,” save and except that the applicable regulation may provide cases where public signs and commercial advertising must be in French only (e.g. large billboards having an area of 16 square metres or more and visible from any public highway).
There is a regulation defining the scope of the expression “markedly predominant.” According to that definition, French is markedly predominant where the text in French has a much greater visual impact than the text in the other language. That regulation further provides that the text in French is deemed to have a much greater visual impact if French is at least twice as large and prominent as the other language.
Similar to product labelling and packaging, there is also an exception for trademarks, whether registered or not. The Regulation was amended in 2016 in order to ensure a greater presence of the French language in the public display of trademarks. It was previously allowed to put a sign containing only a trademark in a language other than French. Under the 2016 rule, where a trademark is displayed outside an immovable only in a language other than French, a “sufficient presence of French” must in addition be ensured on the site.
A “sufficient presence of French” can be ensured with: (a) a generic term; (b) a description of the marketed products or services; (c) a slogan; or (d) any other indication, favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site.
Several factors are to be considered to determine whether the presence of the French language is sufficient. Without limitation, under the Regulation, the sufficient presence of French means signs or posters whose qualities: (a) give French permanent visibility, similar to that of the trademark displayed; and (b) ensure its legibility in the same visual field as that mainly covered by the trademark signs or posters.
The new rules
As mentioned above, the landscape regarding the exception for trademarks will be completely overhauled. Under the new provisions that will come into force on June 1, 2025, only registered trademarks (in Canada) that do not have a French registered version will benefit from this exception for product labelling and packaging as well as public signage and commercial advertising.
This is a major change as a lot of trademark owners have previously relied on unregistered trademarks, especially in the case of descriptive marks and secondary marks.
The Regulation has not yet been amended to reflect the changes contained in Bill 96, but it is expected that it will be the case before 2025, including with regards to the rules applicable to catalogues, websites and social media accounts.
The exception for registered trademarks will be further narrowed depending on the situation.
Product labelling and packaging
If a generic term or a description of the product is included in the registered trademark, it will need to appear in French on the product or on a medium that is permanently attached to it. It is not clear what a medium that is permanently attached to a good means, and there is not yet any guidance from the regulator (the Office québécois de la langue française) in that respect.
During the consideration of Bill 96 in Committee, examples of how this new provision could be interpreted were provided. A registered trademark like BEAUTY SHOP could continue to be displayed on packaging without any French translation. However, a registered trademark such as “SOFTSOAP BRAND, Lavender and Shea Butter, washes away bacteria, deeply moisturize to hydrate skin, refill 50 ounces, 1.56 QT, 1.47 liters, refill over 673 ounces, use 48 less plastic per ounces, 7.5 ounces pumps” would need to be accompanied with a French translation of the descriptive phrase “Lavender and Shea Butter, washes away bacteria, deeply moisturize to hydrate skin, refill 50 ounces, 1.56 QT, 1.47 liters, refill over 673 ounces, use 48 less plastic per ounces, 7.5 ounces pumps.”
This provision might impact some trademark owners that display descriptive trademarks on their goods and packaging.
Public signage and posters
On public signs and posters visible from outside premises, French will need to be “markedly predominant” where such a trademark appears in a language other than French, whereas under the current rule, only a “sufficient presence of French” is required. As mentioned above, this could mean that French will need to be at least twice as large and prominent as the other language, which could be an onerous change and which could be cumbersome for businesses.
Next steps
Trademarks owners should consider filing applications to register their trademarks which are in a language other than French, if such trademarks are not already duly registered in Canada. Any such trademark should however not be registered in French, failing which the trademark exception will not be available. They should consider acting quickly to get their trademarks registered, as examination time at the Canadian Intellectual Property Office is currently around four years from the filing of an application (unless the application is using the Pre-Approved List of Goods and Services, for which the timeline is around 19 months).
Trademark owners should also consider if their registered trademarks include any generic terms or descriptive language that will need to be translated on packaging, labelling and signage and start planning ahead for any modifications that will be needed to such items.
This newsletter is to be used as an informational tool and does not constitute a legal opinion. Miller Thomson’s Marketing, Advertising & Product Compliance team is ready and able to help you identify and navigate the obligations that Bill 96 imposes on you and your business.
