Recognized v. Registered Trademarks - Quebec Amends the Charter of the French Language

Proposed in May 2021 and adopted on May 25, 2022, Bill 96 amends the Charter of the French Language (the “Charter”) – the statute governing the use of French as the language of business in the province of Quebec, including contracts and trademarks.

Businesses previously did not have to translate “recognized trademarks” placed on packaging, public signs, posters, and commercial advertising into French – unless a French version of the trademark has been registered. However, the amended Charter now requires unregistered marks that appear on public signs, posters, and in commercial advertising to be translated into French regardless of whether unregistered trademarks have accrued rights at common law. In other words, the current “recognized trademarks” exception under the Charter is now limited to “registered trademarks.”

In addition, if a registered trademark appears on public signs and posters visible from outside premises, the French translation must be “markedly predominant” where such a trademark appears in a language. For reference, markedly predominant is a defined term in the Charter. Typically, French has to be at least twice as large as any other language, and other characteristics of the signs or posters cannot reduce the visual impact of the text in French.

The transitional provisions allow businesses three years (i.e., to May 2025) to meet these requirements.

The amendments appear limited to public signs, posters, and commercial advertising and not product packaging. Parliamentary discussions suggested that generic phrases or descriptions of products that form part of a non-French registered mark may need to be translated on product packaging, and increased prominence may need to be given to the French language translation. Mandatory generic product identity on packaging is typically required under the federal Consumer Packaging and Labelling Act and its underlying regulations and may also be subject to the prominence requirements for products sold in Quebec. This could foreseeably create issues for products sold Canada-wide under a single type of packaging and is perhaps something that requires clarification.

A close reading of the amended Charter suggests that the presence of a French version mark on the trademarks register – whether registered or not – will disallow a business to rely on this exception. In other words, the presence of a pending application for a French-language mark may disallow a business from using a corresponding registered English language mark.

As there are significant delays in registering trademark applications before the Canadian Trademarks Office (topping off at 39 months), we recommend businesses immediately start reviewing gaps in their trademark portfolios, their product packaging, and the content of their posters, signage, and commercial advertising (particularly those visible on the outside) to explore the changes that may be required in the near future.

For clients concerned about registering pending applications within the transitional period, we recommend reviewing options for expediting examination, including:

• Fast-tracking applications by preparing statements of goods and services that are pre-approved by the TMO; and
• Reviewing and responding to pre-assessment letters to address any issues around the description and classification of goods and services in their applications.

For any questions on the newly enacted Bill 96 and its impact on your business, please do not hesitate to contact Dickinson Wright LLP.