Executive Summaries Jun 13, 2022
Adoption of Bill 96: How Will Your Trademarks and Public Signs Be Affected?
Now that Bill 96, An Act respecting French, the official and common language of Québec ("Bill 96") has been formally adopted and received Royal Assent on June 1, 2022, we will explain the impact of this new law on trademarks and public signage of businesses.
In the spring of 2021, following the introduction of Bill 96 to further protect and promote the French language in Québec, we published a brief article on the impact of using a trademark in a language other than French. Therefore, we are presenting an update of this article, especially since an additional provision concerning trademarks in a language other than French has been added to the bill since its initial introduction.
This bill introduces significant changes not only to the Charter of the French Language (also known as Bill 101, hereinafter the "Charter") but also to more than twenty other acts affecting many facets of society, including education, commerce and labour, to name but three sectors particularly affected. For this article, we will focus on the impact of the Bill on trademark use, particularly in the context of labelling and public signage.
For other impacted sectors, we recommend the recent article "What Employers Need to Know" written by our Labour and Employment Law team and the article written by our Commercial Law team "How Will It Affect Your Relations with Customers and Suppliers?".
Labelling or Packaging of a Product: Exceptions Reviewed
Firstly, it is important to mention that historically, the Regulation respecting the language of commerce and business (the "Regulation") has long provided for exceptions for the use of a "well-known trademark within the meaning of the Trademarks Act" written "in a language other than French", both on the products and their packaging as well as in public signage. For example, if a company used a trademark in a language "other than French", it became mandatory in its public signage to add a generic description of the products or services or a slogan in French. This is how storefronts such as "Toys 'R' Us - jouets" and "Centre de rénovation Home Hardware" were created.
Narrowing the exception's application
Thus, the initial Bill 96 did not modify the disposition of using a trademark in a language other than French on a product or its packaging mentioned above. However, the Parliamentary Commission added section 51.1, one of the objectives of which is to prevent a person from filing the entire side of a package written entirely in a language other than French as a trademark to invoke the exception provided for in the Regulations.
In other words, we can no longer attempt to avoid the mandatory inclusion of French-language labelling on a product by invoking the registered trademark provision, even though there appears to be a possible conflict with a right under section 19 of the Trademarks Act. Moreover, under the principle of the paramountcy of federal laws over provincial laws, we could expect a potential legal dispute over this provision on the grounds that it is unconstitutional.
An exception that remains ambiguous
One of the purposes of section 51.1 is to include an exception in the Regulations allowing a trademark in a language other than French to be used on a product. However, as noted earlier, the Regulation provides an exception for a "a recognized trade mark within the meaning of the Trade Marks Act". This new legislative provision, which takes precedence over a regulation, provides that the exception now applies only to a "registered trademark within the meaning of the Trademarks Act". Thus, as of June 1, 2025, when this provision comes into force, the exception for the use of a trademark written in a language other than French on a product will only be permitted for the duly registered trademarks.
However, despite this clarification, the exception remains ambiguous. It should be reminded that trademark registration applies only to well-defined goods and services. Therefore, if one has a trademark registration in a language other than French that covers lead pencils, one could benefit from the exception. But what happens if you decide to extend your line of products to erasers and ballpoint pens? Will you then be required to use a French version of the mark on erasers and ballpoint pens while waiting to obtain a new trademark registration for these additional products?
The ambiguity will remain until there is a court decision on the issue.
Now back to the exception in the Regulations that allows the use of a "recognized trade mark within the meaning of the Trade Marks Act" on goods.
Under the Regulations, the word "goods" also includes their packaging. In doing so, the exception allowing the use of a "recognized trade-mark within the meaning of the Trade-marks Act" also applies to packaging.
However, in the new version of the Charter under Bill 96, there is no such amalgamation, which means that only registered trademarks written in a language other than French can benefit from the exception on the product. The result is that, according to the current situation, if one has a trademark in English, say for lead pencils, but this trademark is not registered, then it will have to include a French translation on the product, even though the version in the other language could benefit from the exception on the packaging, which appears to us as nonsense.
The government may eventually amend the Regulations to limit the exception for packaging (and possibly catalogues, brochures, pamphlets, trade directories, etc.) to registered trademarks only. In short, the situation is not yet very clear.
What You Need to Know About Public Signage Change
Bill 96 now provides that the exception for using a trademark "in a language other than French" now applies only to "registered trademarks".
While this has the advantage of being clear, it still restricts the ability to use unregistered trademarks. Moreover, the ambiguity of the exception's scope remains. Indeed, if our registration is for the retail sale of shoes, what happens when we also decide to offer retail sales of handbags? Will the exception apply to the entire store, only a portion of the store, or not, because the registration does not cover all of the offered services?
Bill 96 also provides that in public signage visible from the exterior of the premises (i.e., not only the storefront but also whatever is visible through the window), French must be clearly predominant where such a trademark appears in another language. This constitutes a significant change from the current state of the law since the Regulation provides, in such a case, only for a "sufficient presence of French".
At first glance, it looks like this will be a headache for the Canadian Tires of the world: they will only be able to use their trademark on their storefronts if the French language is predominant. Will we then see the words "Magasin général" take up more space on storefronts than the trademark? This is what Bill 96 seems to require.
How to Prepare for These Changes?
The provisions of Bill 96 reviewed above will come into force on June 1, 2025, giving businesses sufficient time to adapt accordingly. In addition, the requirement to have a registered trademark to benefit from the exceptions remains an obstacle that is not always easily or quickly overcome.
The current situation at the Canadian Intellectual Property Office ("CIPO") is that it takes between two and three years to process an application for trademark registration if everything goes well. If an application is opposed, one can easily add two or three years to obtain a trademark registration if the opposition is unsuccessful. It is therefore not unrealistic to expect to wait five to six years before getting your trademark registration.
These timelines make the exception non-applicable, in practice, for new companies or re-branding existing companies... 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 timeline for obtaining a trademark registration within internationally acceptable standards. That said, even if the timeline were reduced to somewhere between 12 and 18 months, it would still be too long in many cases for the vast majority of companies planning to open for business.
Therefore, it is important to plan ahead. We may advise you to file your trademark application at least three years before the opening of your business, but we are well aware that such a recommendation is simply not realistic in most cases.
An easy solution to avoid the above complications is to adopt a trademark in French, which is not always the ideal solution for companies with ambitions outside the province. An alternative to consider if one wants to give an international or non-franco-ethnic connotation to one's trademark would be to adopt a fancy mark that, although resembling a word "in a language other than French", is not really a word.
Finally, choosing a good trademark becomes more important with the adoption of Bill 96. If you have any questions on this subject, we invite you to contact our trademark team, who will be pleased to discuss strategy with you.
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