In our June Brands Update we reported on possible tighter restrictions on the use of English-language marks due to come into force in Quebec. Here's a more in-depth look at the situation.
What has happened?
Bill 96, which will amend the Charter of the French Language, received assent on 1 June 2022. The introduction of the Bill follows political promises made by the government in Quebec when it was elected in 2018 to acknowledge the French language as the official and common language in Quebec.
Currently in Quebec a trade mark can include non-French words, as long as the mark is "legally recognised" and there is no registration for a French version of the mark. "Legally recognised" means registered, pending or unregistered.
Bill 96 replaces the term "recognised" with the word "registered". This means that it won't be possible to use unregistered marks and pending applications containing non-French words unless and until they are registered. Pending registration, these marks will have to be translated and used as the French equivalents. Furthermore, where there is a registered French equivalent (and possibly even a pending application for a French equivalent) to a non-French trade mark, that mark must be used.
The Bill also imposes other requirements as regards packaging, labelling, posters, signage and advertising. For example, where a registered trade mark includes a non-French generic term or description, this will have to appear on the product in French. Similarly, non-French marks on outdoor signage will have to be accompanied by "markedly predominant" French translations as opposed to containing a "sufficient presence of French" (the current requirement).
What marks will this apply to?
Initial indications are that the new law will only apply to trade marks consisting of or including generic terms. No details have yet been provided on what will be deemed a generic term or descriptive of the product. However, the government has promised to adopt a regulation defining the scope.
It seems that the intent is not unduly to restrict the right for trade mark owners to display their registered trade marks on packaging but rather to prevent traders from circumventing the Charter by filing trade mark applications for labels including non-French generic words.
To give an example, use of Apple Watch (if registered) will be fine if Apple Montre or Apple Horlogue are not registered or pending. However, the generic terms “montre” or "horlogue" will need to be applied to the packaging of the product and used in advertising. Furthermore, any use on signage will need to be accompanied by a "markedly predominant" French translation.
From when does the new law apply?
The new law applies from 1 June 2025 onwards (three years after the assent). It is likely that the Bill will come into force in its adopted version. However, the Bill is currently facing several challenges (focused on other legislation which needs to be modified in order to reflect the amendments made).
What do brand owners need to do?
Brand owners should review their current trade mark usage in Quebec and seek advice about protection accordingly. This review should encompass product packaging, labelling, signage, posters and advertising.
Given that Canadian trade mark applications are currently taking approximately three years to proceed to registration, brand owners will need to consider filing any new applications required fairly soon. Likewise, brand owners should consider what pending and registered trade marks they own and the implications of holding these rights. Prior to applying for or adopting a translation of a mark, it is obviously advisable to conduct searches to ensure that the mark can be used in translated form without infringing any third party rights.
What next?
We are not aware of other French-speaking territories intending to follow Quebec's example, although it is possible.
We will report further on the development in Quebec when more information becomes available. Please get in touch with your usual Taylor Wessing contact to discuss how this development might apply to you.
Authored by Alison Cole.
