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THE AMENDED CHARTER OF THE FRENCH LANGUAGE IS NOW IN FORCE! ARE YOUR TRADEMARKS COMPLIANT?

2022-05-26

The amended Charter of the French Language is now in force!
Are your trademarks compliant?

Geneviève Hallé-Désilets*
ROBIC, LLP
Lawyer, Patent and Trademark Agent

On May 24, 2022, the Quebec government adopted Bill 96 entitled An Act respecting French, the official and common language of Québec (the “Act“) reforming the Charter of the French Language (the “Charter“), in particular with respect to the use in Quebec of trademarks in a language other than French on public signs, commercial advertising and products. 

The following summarizes the major modifications to the Charter in such regard:

  1. A trademark in a language other than French appearing on a product must be registered: A trademark appearing on a product (including its label and packaging) may be in a language other than French, if it is registered with the Canadian Intellectual Property Office (CIPO) and if no corresponding French version is registered. In addition, if the mark contains a generic or descriptive term for the product, it must appear in French on the product or on a medium that is permanently attached to it[1].
  • A trademark in a language other than French appearing in commercial advertisements and public signs must be registered: A trademark appearing in commercial advertisements and public signs (including, for example, delivery vehicles, employee uniforms) may be in a language other than French, if it is registered with CIPO and if no French version has been registered. Otherwise, the mark must be translated in French and displayed in a markedly predominant manner[2].
  • French must be markedly predominant on public signs visible from outside premises: A trademark registered in a language other than French that appears on public signs visible from outside premises must be accompanied by inscriptions in French that appear in a markedly predominant manner (this replaces the former criterion of “sufficient presence of French”)[3]. According to the current regulations[4], this criterion will be met if the text written in French has a visual impact that is significantly greater than that written in another language (excluding the trademark), i.e. twice (2) as great. However, it is anticipated that such regulations will be amended to include new guidelines in public signage.

The application of the amendments summarized above will only come into force in three (3) years[5], i.e., May 24, 2025. However, as mentioned in our previous article, since the registration of a trademark currently takes at least three (3) years, it is recommended :

  1. to establish a list of trademarks in a language other than French that are used in Quebec (or that will be used in the future),
  2. to conduct the necessary preliminary searches, and
  3. to quickly file an application for the registration of such marks that are not yet registered (for marks including a generic or a description of the product in a language other than French, see our comments above).

This approach will allow to avoid the costs of adding a translation to public signs, advertisements, labels, and packaging (not to mention the fines for non-compliance!).

Our team specialized in trademarks, as well as in advertising and marketing, may guide you through the trademark registration process and advise you on the impact of the Charter of the French Language and its amendments on your business in Quebec or that of your clients.

* Lawyer at ROBIC s.e.n.c.r.l. The author would like to thank Alexandre Pagé for his contribution in the writing of this article.

[1] Section 42.1 of the Act, adding section 51.1 to the Charter.

[2] Section 47 of the Act, adding section 58.1 para. 1 to the Charter.

[3] Section 47 of the Act, adding section 58.1 para. 2 to the Charter. Under section 113 of the Act, the OLQF would also have additional powers, including the ability to apply to the court for an order to remove or destroy signs, advertisements, billboards and illuminated signs that contravene the Charter.

[4] Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French Language, CQLR, c. C-11, r. 11.

[5] Section 201(5) of the Act.