On May 24, 2022, Québec’s provincial government adopted Bill 96, An Act respecting French, the official and common language of Québec (Bill 96). In short, Bill 96 is intended to significantly overhaul and strengthen the Charter of the French Language in Québec to further recognize French as the province’s only official language, and includes material changes to laws governing the use of English language trademarks in Québec.
Currently, in Québec, a “recognized trademark” (meaning a trademark that is registered/applied for in Canada or a common law trademark) that is not in French is exempt from translation requirements when displayed (i.e., such trademark need not be translated into French), as long as no French version of such trademark has been registered in Canada. For example, a registered or common law trademark, such as a company logo, can be displayed in English on a product’s packaging sold in Québec without being required to be translated into French.
Bill 96 would narrow the current exemption for “recognized trademarks” by allowing only non-French trademarks registered within the meaning of the Trademarks Act (Canada) (i.e., not common law trademarks or trademarks which are the subject matter of pending trademark applications in Canada) to benefit from the exemption.
Additionally, if a registered trademark benefitting from the Bill 96 exemption includes a “generic term or description” of a product (the scope of “generic term or description” has not been outlined), the term or description would have to be translated into French elsewhere on the product, with permanent visibility and readability. This means that under such circumstances, the filed English trademark can no longer be used alone (without a French translation of the same accompanying it).
In addition, currently Québec’s “recognized trademark” exception that allows registered and common law trademarks to be in English (unless there is a French version registered), applies to commercial advertising, public signs, and product packaging/labelling. However, even with this exception, French still has to have a “sufficient presence” when advertising visibly outside a premise. A “sufficient presence” means giving a prominent display to the French accompanying the trademark. It is important to note that Bill 96 seeks to change the current “sufficient presence” of French standard (noted above) to a higher standard of a “markedly predominant” presence of French.
Key actions required
At present, persons may continue to use their unregistered non-French trademarks in Québec until June 1, 2025 (when the above-noted trademark law changes come into effect). At this time, Dentons strongly recommends that businesses using unregistered non-French trademarks in Québec (i) identify and review all trademarks currently used in Québec (for example, in signage, marketing materials, commercial agreements, email signatures, etc.) and (ii) consider registering such unregistered trademarks in Canada. It is important to note that the Canadian Intellectual Property Office (the government agency in Canada that processes trademark applications) is currently taking approximately three years to review and approve trademark applications. Therefore, any trademark applications contemplated by businesses in response to the above-noted changes introduced by Bill 96 should be commenced immediately.
We also recommend undertaking an analysis of your filed trademarks to determine if they contain a “generic term or description” for which a French translation is available. If any such trademark contains a “generic term or description” for which a French translation is available, we recommend, at the very least, adopting a French translation of the trademark in question to be used on and after June 1, 2025. To provide added protection for the French version of the trademark, we recommend filing (sooner rather than later) a trademark application for the French version of the trademark.
We expect further guidance on this matter from the Quebec regulatory authorities and draft regulations to be released by the Quebec government by sometime in early 2023. Once such information becomes available, we will provide an update on the same.
We would be pleased to assist with reviewing your current trademark portfolio and to advise on contingency plan development (in the event that you are not able to register certain non-French trademarks prior to the June 1, 2025, effective date of the legislative changes) and any required trademark registrations in response to Bill 96. For more information, please reach out to the authors, Laurie LaPalme, Derek Levinsky, Panagiota Dafniotis and Jesse Collins-Swartz.
