On June 6, 2022, we published an article on 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”). That article provided a summary of certain consequences of Bill 96 and outlined various significant changes to the legal requirements for businesses operating in Québec.
In our article published on March 30, 2023, we provided an in-depth analysis of Bill 96’s consequences for trademark holders.
Regulation respecting the language of commerce and business
As indicated in our March 30, 2023 article, there are a number of Charter exemptions included in the Regulation respecting the language of commerce and business (the “Regulation”). It was expected that the Regulation would be amended to reflect the provisions of Bill 96.
Although most of Bill 96’s provisions have already come into force, amendments related to (1) product labelling/packaging, and (2) public signage will come into effect on June 1, 2025.
The amendments to the Regulation are designed to take the upcoming changes into account. After months of waiting, on January 10, 2024, the Government of Québec finally published the draft Regulation to amend mainly the Regulation respecting the language of commerce and business (the “Draft Regulation”)
As indicated in the Draft Regulation, the objectives are to:
- specify certain cases in which product inscriptions can be in a language other than French;
- set rules applicable to public signage involving trademarks and business names; and
- update the wording of certain provisions of the Regulation to ensure conformity with the Bill 96 amendments, including without limitation as regards contracts of adhesion.
Amendments to the Charter with respect to trademarks
Let us begin by reviewing the Charter amendments slated to come into effect on June 1, 2025.
As things currently stand, a non-registered trademark (i.e. common law trademark) may qualify for an exemption allowing it to be displayed in a language other than French on a product, its packaging and related documents. Under the new provisions, only registered trademarks in Canada that do not have a registered French-language version may qualify for this exemption. In addition, if a registered trademark contains a generic term or a product description in a language other than French, the term or description must also appear in French on the product or on a medium permanently attached to it.
As regards public signage, currently a non-registered trademark (i.e. common law trademark) may qualify for an exemption allowing it to be displayed in a language other than French. However, the Regulation stipulates that there must be a “sufficient presence of French” whenever a trademark in a language other than French is displayed outside a building (an immovable).
Under the new provisions, only registered trademarks in Canada that do not have a registered French-language version may qualify for these exemptions. In addition, on public signage “visible from outside premises,” French must be “markedly predominant” whenever such a trademark is displayed in a language other than French. Bill 96 sets out similar rules for the “names of enterprises” containing expressions in a language other than French, although distinguishing between a business name and a trademark is not always easy.
The Draft Regulation is highly technical. It is quite easy to get lost in the various concepts and nuances. This article aims to summarize the general principles involved. We note from the outset that, for the most part, the Draft Regulation specifies certain aspects but sets out no new Charter exemptions, which may well prove disappointing to many stakeholders.
Inscriptions on products, packaging and related documents
The Draft Regulation rectifies an inconsistency in Bill 96 by specifying that a product includes its container or packaging (wrapping), as well as any documents or objects supplied with it.
The Draft Regulation also defines the following terms:
- a description refers to one or more words describing the characteristics of a product;
- a generic term refers to one or more words describing the nature of a product.
The Draft Regulation also stipulates that no generic terms or product descriptions included in a trademark in another language may be given greater prominence than in French, nor may they be available on more favourable terms. This means that the French version must be at least as predominant as the English version.
It should be noted that during the parliamentary committee review for Bill 96, the Minister Responsible for the French Language provided an example of how the rule would be applied: a registered trademark like BEAUTY SHOP could be displayed on product packaging without any French translation. However, a registered trademark such as “SOFTSOAP BRAND, Lavender and Shea Butter, washes away bacteria, deeply moisturizes 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 have to be accompanied by a French translation of the wording following “SOFTSOAP BRAND.”
The Government of Québec recently published an example of how this new rule would be applied:
It is important to note that the Draft Regulation includes two notable exemptions:
- a trademark in respect of which an application for registration is pending is deemed to be registered as of the date on which the application is filed with the Canadian Intellectual Property Office; and
- a grace period (extending until June 1, 2027) is provided for products in non-compliance with the new rules if they were manufactured prior to June 1, 2025 and no French-language version of the trademark is registered in Canada.
The Draft Regulation specifies that French must be “markedly predominant,” i.e. the text in French must have a much greater visual impact than text written in another language. The criteria in the Draft Regulation are very similar to those previously used to determine when French is “markedly predominant” (this concept is already used in other contexts not involving trademarks in a language other than French). According to the new criteria:
- the French text must be within the “same visual field” as the text in another language, i.e. all components of the signage must be visible and legible at the same time without the observer having to change position;
- the French text has a much greater visual impact if (1) it is at least twice as large (in relation to the sum total of all texts appearing in the same visual field) as the non-French text, and (2) the French text’s legibility and permanent visibility is at least equivalent to those of the non-French text (including lighting) so as to make them easy to read, both at the same time, at all times; and
- certain terms are not considered to be French text, including business hours, addresses, numbers, etc.
In particular, as regards trademarks and business names in languages other than French, the Draft Regulation states the additional following requirements:
- public signage is “visible from outside premises” if it can be seen (1) “from outside a space, closed or not, including on an immovable, a group of immovables or inside a shopping centre,” or (2) “on a bollard or other independent structure, including a pylon sign except, in the latter case, where more than two trademarks or enterprise names appear on the public signs and posters;”
- public signage visible from outside premises comprising a trademark or a business name in a language other than French, must be accompanied by terms in French, namely: (1) a generic term (according to the above definition); (2) a description of the products or services concerned (according to the above definition); or (3) a slogan;
- the current exemption in the Regulation for any artificial combination of letters, syllables or figures, or the use of pictograms, figures or acronyms, is maintained; and
- unlike product inscriptions, there is no exemption for pending trademark applications.
The Government of Québec recently published two examples of how these new rules would be applied:
(Source: Jean-François Roberge / X)
The Charter provides that catalogues, brochures, flyers, commercial directories, order forms and any other documents of the same nature available to the public must be in French. A non-French version can be made available to the public if the French version is available on terms that are at least as favourable.
The Draft Regulation states that this provision applies to websites and social media. This comes as no surprise because it reflects a longstanding position of the Office québécois de la langue française (OQLF), the governmental body tasked with enforcing the Charter.
It is interesting to note that the Regulation’s exemption for trademarks in a commercial publication context has not been modified. It will therefore continue to apply to both registered and non-registered trademarks unless the Regulation is further amended.
Other noteworthy provisions
As regards the product inscription rules, under which French must be at least as predominant as any other language, the Draft Regulation states that product inscriptions include the inscriptions displayed for the user using an integrated software.
In all likelihood, this new provision is designed to eliminate a loophole stemming from a 2016 Court of Québec decision, which held that voice navigation software available only in English was not in violation of the Charter.
The Draft Regulation also provides various clarifications regarding “contracts of adhesion” (i.e. contracts pre-determined by one party), which must be made available in French at the same time as in another language (effective June 1, 2023), failing which such contracts may be deemed null and void.
Any interested parties wishing to submit comments on the Draft Regulation may do so by writing to the Minister of the French Language within a period of 45 days calculated from the publication date (January 10, 2024).
According to the Government of Québec, the vast majority of commercial businesses are already in compliance with the new rules. Some readers may find that statement surprising. It should be noted that the Intellectual Property Institute of Canada (IPIC) and the International Trademark Association (INTA) have been invited by the OQLF to discuss the Draft Regulation and to submit comments.
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.