Trademark and Business Considerations

The revisions tabled May 13, 2021, by the Quebec provincial government, under Bill 96-An Act respecting French, the official and common language of Quebec, will have a significant impact on businesses (including brands, signage, commercial packaging and labelling and business documents).  As a fair amount of debate is likely, the finalization and timing of any changes is not expected until sometime in 2022.  Naturally, these amendments could be further impacted by the outcome of any provincial and/or federal elections in that time.

Transition Period

The amendments are expected to come into force within three years after the Bill receives Royal Assent.

Trademark Exemption

As many businesses may be aware, the current exemption, permits the use of a trademark in Quebec in a language other than French “if” it is a recognized trademark under the Trademarks Act. The legislation allowed for both registered and unregistered trademarks (a pending application or use at common law) unless a French version has been registered.

The proposed changes will eliminate the ability to rely solely on use or the existence of a pending trademark application in another language.  Only registered trademarks will continue to offer protection.

The French language will need to be markedly predominant on exterior public signs, advertising and posters internally as well as visible from outside premises which bears a trademark in another language.  For example, the French translation for BEST BUY, MEILLEUR ACHAT, would have to appear markedly predominant on any applicable materials, unless a registration BEST BUY under the Trademarks Act had been secured.

Business Contracts

Currently, commercial publications must be offered in French or in French and in another language under equivalent conditions.  Bill 96 now extends this requirement to electronic publications and as well as including commercial print materials such as invoices, receipts and related documents.  Business contracts may also be in French and another language only if both parties agree after reviewing the French version that they will be found by the agreement in the other language.

New Enforcement & Fines

It would also permit the Office quebecois de la langue francaise (OQLF) to request an injunction to enforce compliance and fines will increase significantly from $700 to $7,000 for individuals and $3,000 to $30,000 for businesses. These can double or triple on subsequent offences. Each day of non-compliance will increase the fines and directors and executive officers of the company will have their fines doubled.  The OQLF can request the Court to order non-compliant business signs and materials to be destroyed within 8 days of the Order at costs to the owner.

Business Considerations/Strategies

As a trademark application is currently pending before the Canadian Trademarks Office for up to 30 months it will be important for business owners to evaluate their portfolios and file new applications for any common law trademarks used in a language other than French.  Further, a review of current or prospective trademarks should be evaluated to avoid delays to registration caused by:

  1. Descriptive or non-inherent distinctiveness issues
  2. Long list of goods and services requiring amendment
  3. Potential for confusion objections at examination
  4. Potential for trademark opposition

We will continue to monitor and provide updates on the legislation.