The Official and Common Language of Québec Act: How Will it Affect Your Trademarks and Public Signage?

Bill 96 (An Act respecting French, the official and common language of Québec) is a colossal 100-page bill (we could have opted for 101 pages for symbolism...) that aims to strengthen the protection and promotion of the French language in Québec, and even beyond the province's borders.

If passed, this bill would make significant changes, not only to the Charter of the French Language (also known as "Bill 101", hereafter the "Charter") but also to more than twenty other laws affecting many areas of society, including education and employment, to name but two particularly affected sectors. For the purposes of this article, we will limit ourselves to the anticipated effects of this bill on the use of trademarks, particularly in the context of public signage.

Historical Review

Since 1977, the Charter of the French Language prescribes the obligation to use French in certain circumstances and regulates the use of all languages other than French in certain contexts.

For a long time, the Regulation respecting the language of commerce and business (the "Regulations") have provided exceptions for the use of a "recognized trademark as defined in the Trademarks Act" written "in a language other than French", both on products and their packaging as well as in public signage. We will return to the implications of the two quoted exceptions below.

In 2016, following court decisions confirming that public signage consisting only of a trademark in a language other than French, without a French generic or descriptor, was permissible and legal, the government amended the Regulation to provide that:

where a trademark is displayed on the exterior of a building exclusively in a language other than French [...], a sufficient presence of French must also be ensured on the site and sets out the guidelines defining sufficient presence.

Following the implementation of these amendments to the Regulations, if a mark is used in a language "other than French", it became mandatory, in one’s public signage, to add, for example, a generic or a description of the goods or services concerned or a slogan in French. This is how storefronts such as "Toys 'R' Us - jouets" and "Centre de rénovation Home Hardware" began to appear.

Amendments in Bill 96 relating to Public Signage

First, let's review the fact that the Regulation already provides an exception and allows for the use of a "recognized trademark as defined in the Trademarks Act" that is written "in a language other than French". The Office québécois de la langue française (OQLF) has generally taken the position that a "recognized trademark as defined in the Trademarks Act" means a "registered" trademark. However, the courts have repeatedly recognized that the Trademarks Act acknowledges the existence of marks that are not registered and have therefore allowed the exception for unregistered marks to apply. In this context, some ambiguity remains.

Bill 96 provides that the exception permitted for the use of a mark "in a language other than French" applies only if it is a "registered trademark", unless a French version is also registered. This has the advantage of being clear, but it greatly restricts the freedom to use trademarks that are not registered. Moreover, with the current situation at the Canadian Intellectual Property Office (CIPO), it takes between two and three years, at best, for an application to be processed before one can expect to obtain a registration for its mark. This makes the exception inapplicable, in fact, for new businesses or in cases of a rebranding of existing businesses... unless one has the foresight to do so well in advance. CIPO is currently hiring and training a significant number of new examiners in an effort to bring the time required to obtain a trademark registration within internationally acceptable standards. That said, even if the time frame were reduced to between 12 and 18 months, it would still be too long in many cases for the vast majority of businesses planning to market products or services.

Amendments to the Bill 96 relating to the Use of a Mark on a Product or its Packaging

Bill 96 does not change the regime applicable to the use of a mark in a language other than French on a product or its packaging. However, since the exception refers to a "recognized trademark as defined in the Trademarks Act" without specifying that the trademark must be registered, it could be more difficult for the OQLF to claim that this exception applies only to registered trademarks since the legislator made it clear that the exception applies only to registered trademarks for public signage.

Strategic Considerations

Getting a Head Start:

We would recommend that you apply for a trademark at least three years in advance of marketing your goods or services if you hope to benefit from the exception allowing the use of a mark in a "language other than French" in signage. However, we understand that such a recommendation is simply not realistic in most cases.

Adopt a Mark in French:

An easy alternative if we want to avoid having to indicate a generic or a slogan in French in the display is always to adopt a French brand. However, this option may not fit our business plan from a marketing point of view.

Adopt a Fantasy or Invented Mark:

An alternative to consider if we want to give an international or non-French connotation to our mark would be to adopt a fancy or invented mark which, although resembling a word "in a language other than French", is not really one. These marks have the advantage of generally receiving the broadest range of protection and are excellent choices from a trademark law perspective.

Choosing the right trademark becomes more important, and we invite you to contact our trademark team, who will be happy to discuss strategy with you.