On May 4, 2016, the Quebec government followed through on its plan to amend the Charter of the French Language (the “Charter”), publishing draft regulations which require the sufficient presence of French when a trademark in a language other than French is displayed on signage or posters outside a place of business in the Province of Quebec.
The Charter is intended to promote and protect the French language in Quebec and is administered by the Office québécois de la langue française (“OQLF”). The Charter provides an exception allowing for use of a trademark in a language other than French without having to include a French version of the mark if it is a recognized trademark within the meaning of the Trade-marks Act, provided that no French version of the mark has been registered.
Just over a year ago, the Quebec Court of Appeal unanimously upheld the Superior Court decision that the Charter did not require a descriptive French term to be added to non-French trademarks on signage depicting trademarks if the trademark exception applied. The Quebec Government did not seek a further appeal but announced plans to amend the Charter, requiring Quebec businesses to add French to their outdoor signage, without altering their registered trademarks.
The new draft regulations require Quebec businesses to ensure a sufficient presence of French on their site if they display a trademark only in a language other than French on signs or posters either outside their place of business, or that are intended to be seen from outside their place of business. Signs or posters outside premises situated in a mall or a shopping centre are included in this requirement. Compliance can be accomplished through the presence of French on a sign or poster in:
- a generic term or description of the products or services offered by the business;
- a slogan; or
- any other term or indication, preferably pertaining to the products or services to the benefit of consumers or persons frequenting the site.
Signs on an independent structure such as a totem or post near a place of business must comply only if there is no other outside sign or poster on which the trademark appears.
The “sufficient presence of French” requirement means that French generic terms, slogans or other descriptions on signs or posters that relate to products or services must:
- be permanently visible, similar to that of the trademark displayed; and
- be legible in the same visual field as that of the non-French trademark on signs or posters.
The business must ensure permanent visibility of the French content or have a system in place to guarantee its presence or replacement if the sign is of a precarious nature.
These new requirements appear to affect the trademark exception in the Charter only in respect of signage. The draft regulations do not affect the trademark exception in the Charter as it applies to product packaging or advertising through means other than signage.
It is not clear whether these requirements apply to parties who use a coined term that is not capable of translation into either French or English on signage.
The government has indicated that the draft regulations follow a consultation process involving various groups, including businesses operating in Quebec.
The next step is a 45-day public consultation process during which written comments can be submitted to the government. The regulations will then be amended, if necessary. Once the regulations are finalized and published in the Gazette officielle du Québec, they will come into force fifteen days after publication. Although the changes are expected to come into force this year, there will be a three-year grace period for pre-existing signs or posters or in a situation where the same trademark is already used on signs or posters elsewhere in Quebec as part of a franchise system or otherwise. The new regulations will apply as of the date they come into force with respect to new trademark signs or posters and the replacement of existing signs or posters.
Given the OQLF’s increased budget this year and the potential fines of $1,500 to $20,000 for non-compliance with the Charter, businesses in Quebec should expect continued enforcement of the provisions relating to signage and should take steps to comply. Trademark owners should also consult trademark counsel regarding whether the addition of the French words affect their rights in registered marks and / or require the filing of additional trademark applications.