New Law Regarding the French Language in Quebec; Important Facts to Know for Businesses

Bill 96, a law amending the Charter of the French language (the “Charter”), has been adopted by the Quebec government. For companies doing business in Quebec, this will reinforce obligations regarding the use of French as the language of business, and it will have an important impact on trademarks and business names. The new law will also impose obligations related to the use of French in contracts, communications and in the workplace. Do not hesitate to contact our business law or labour law team for any advice you may need on this regard.

One of the main changes is that a trademark written in a language other than French must be translated, unless it has been registered with the Canadian Intellectual Property Office (CIPO), and provided that no French version is on the CIPO register. In Canada, the trademark registration process now takes more than three years, so we recommend those who are using non-French trademarks to take immediate action.  

It is important to note that even if a non-French trademark is already registered, the Charter prescribes certain restrictions pertaining to the language of its signage.

Bill 96 goes even further, as it pertains to trademarks for goods. This new law will therefore affect businesses in Quebec, as well as foreign businesses operating in Quebec.

We will first address the new law as it pertains to the signage of trademarks and business names visible on outside premises, and then as it pertains to products.

TRADEMARK ON PUBLIC SIGNS AND POSTERS VISIBLE FROM OUTSIDE PREMISES

Registered Tademark in French

You are required to use the French version of a trademark if it is pending or registered at the Canadian Intellectual Property Office (CIPO), even if you filed a non-French version of the trademark.

Registered Trademark in a Language Other Than French

You are not required to translate your trademark registered in Canada. However, on public signs and posters visible from outside premises, French text accompanying the mark must be markedly predominant.

The new exception for registered trademarks, according to Article 58.1 of the Charter, states that:

"Notwithstanding section 58, on public signs, posters and in commercial advertising, a trademark may be written, even in part, only in a language other than French, when, at the same time, it is a registered trademark within the meaning of the Trade-marks Act (Revised Statutes of Canada, Chapter T-13) and that no corresponding version in French in the register kept under this Act.”

However, in the public display visible from outside premises, French be markedly predominant, when such a mark appears therein in such another language.“[1] (free translation, our emphasis)

With the new legislation, the criteria of sufficient presence of French on accompanying text with a trademark visible from outside a building is replaced by the “markedly predominantly” criteria. A regulation already in effect is defining the scope of the expression. For example, when text appears on the same sign or poster, we must meet the following conditions:

“Where texts both in French and in another language appear on the same sign or poster, the text in French is deemed to have a much greater visual impact if the following conditions are met:

1. the space allotted to the text in French is at least twice as large as the space allotted to the text in the other language;
2. the characters used in the text in French are at least twice as large as those used in the text in the other language; and
3. the other characteristics of the sign or poster do not have the effect of reducing the visual impact of the text in French.”[2]

Non-Registered Trademark in a Language Other Than French

There are no exceptions in this case. All non-registered trademarks in a language other than French must be accompanied by a predominantly featured translation. Moreover, you must conform with having the signage predominantly in French.

Business Names

It is to be noted that the exception for registered trademarks does not apply for a business name unless this name is registered as a trademark. If the business name is not registered as a trademark, you must use a French version or have the business name be accompanied by a French translation that is clearly predominant.

TRADEMARK IN ASSOCIATION WITH GOODS

Bill 96 also affects trademarks in conjunction with products and their packaging.

A registered trademark in a language other than French may be used on products or packaging, unless a French version of the trademark is pending or registered.

However, the law goes even further, because for registered trademarks containing non-French descriptive or generic elements, a French translation of such terms must be visible on the product.

While the bill was being studied, the example of SOFTSOAP was given. The registered trademark SOFTSOAP contains descriptive elements such as lavender and shea butter, refill 50 ounces or washes away bacteria. Trademark owners sometimes register the product label as a trademark. The new law requires that descriptive elements which are part of the registered trademark must be translated in French.

APPLICABLE PENALTIES

Until now, the Office québécois de la langue française (QQLF) only took actions against businesses with an establishment in Quebec. With the new law, we can expect that the OQLF will now take actions against foreign companies selling products or services in Quebec.

The fines for non-conformity are considerable $700 to $30,000 may be fined for a first offense, and each day of non-conformity will be considered as a separate offense. It is important to note that the directors and officers of a business may be held personally responsible if they commit an infraction of the law. Directors and officers will be presumed to have committed the infraction themselves if they cannot prove to have taken the necessary precaution to prevent the infraction.[3]

Moreover, the OQLF could issue an injunction to ensure that the requirements of the Charter are respected.

CONCLUSION

Once the law receives Royal Assent, it will gradually come into effect over the course of three years.

Considering that the trademark registration process currently takes more than three years, it is essential to quickly file your applications for non-French trademarks in Canada in order to benefit from the exception for registered trademarks.

Two options to consider when creating new trademarks are choosing French trademarks, or trademarks comprised of invented words that are not part of any language.

Businesses operating in Quebec will have to review their signs, posters, websites, and all other use of their trademarks in order to make sure that they meet the new law requirements.

We invite you to contact our team of trademark professionals if you require assistance.

The bill and its amendments are available here.

The content of this article is informational only and does not constitute legal advice.