Bill 96 and trademarks: public display and commercial advertising | Knowledge

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On May 24, 2022, the Quebec government passed Bill 96, Act respecting French, official and common language of Quebec (there “Law”), which modifies the Charter of the French language (there “charter”) passed in 1977. The changes made by the law will have a significant impact on the use of marks on product packaging, labeling, public display and commercial advertising. This bulletin focuses on the effects of Bill 96 specific to public signage and commercial advertising and on the best way to comply with these new provisions.

Amendments to Public Display and Commercial Advertising

In Quebec, the general rule, which remains unchanged under Bill 96, is that public signage and commercial advertising must be in French. Non-French inscriptions may appear on public signs and in advertising, but the French inscriptions must be “clearly predominant” over the non-French equivalent. [1]

Prior to the adoption of Bill 96, a “recognized” trademark in a language other than French could appear on public display and in commercial advertising without an accompanying French equivalent, provided that a French of the trademark is not registered. On public signs visible from the outside of a building or a commercial space in a shopping centre, the same exception applied with the caveat that a generic term or a French slogan “sufficiently present” also appeared on the sign. [2] The term “recognized mark” had been interpreted to include both registered and common law marks; and a “sufficient presence” of French implied that the French inscriptions enjoyed permanent visibility and appeared in the same field of vision as the non-French mark without necessarily being side by side or of the same size. [3]

With Bill 96, the scope of this exception is greatly reduced. [4] First, only registered trademarks will fall within the scope of the exception. For a mark to appear on public display or in commercial advertising without an accompanying – and clearly predominant – French translation, it must be registered. This applies not only to outdoor signage, but also to in-store signage and displays. It is important to keep in mind that this provision affects not only English trademarks, but any trademark in a language other than French. Therefore, a trademark composed of words in foreign languages ​​may also be affected by Law 96. Quebec office of the French language (“OQLF“) the enforcement authority has even asserted in the past that an invented mark that includes a foreign language element can be “in a language other than French”.

Second, the trademark in question must not have a corresponding French version that “appears” on the Canadian register. This wording could be interpreted to include not only registered trademarks, but also registered trademarks, further narrowing the scope of the amended exception, since what is considered a “corresponding French version” is now expanded.

Third, when a public sign displaying a non-French registered mark is visible from the outside, a French generic term or slogan must nevertheless appear on the sign and be “clearly predominant” in relation to the non-French mark.

Concretely, how will these changes affect the rights of trademark owners in Quebec? By way of example, the use of the fictitious HARDWARE KING trademark, in association with hardware services, could potentially be affected in the following ways:

  • If HARDWARE KING is not yet registered, it must be accompanied by its French equivalent (eg ROI DE LA QUINCAILLERIE) on public signs and in commercial advertising, and the French equivalent must be clearly predominant.
  • If HARDWARE KING is a registered trademark (in English only), it may appear on public displays or displays not visible from the outside and in commercial advertisements without a corresponding French equivalent. On public display visible from the outside, it must be accompanied by a generic term or a French slogan, which must be clearly predominant (which may mean, for example, that the generic words, CENTER DE RÉNOVATION, should appear twice as large as MATERIAL KING).
  • If HARDWARE KING is registered in English and a French version of the mark is also registered or requested, then on all public signage and commercial advertising, it must be accompanied by its French version ROI DE LA QUICAILLERIE, which must also be clearly predominant (twice as big as HARDWARE KING).

In addition, Law 96 requires that if a sign visible from the outside bears a trade name which is not itself used as a trademark and that this trade name includes an expression derived from a language other than French , an inscription in French such as a generic term or a slogan must appear on the sign in a clearly predominant way. [5]

Finally, it should be noted that Internet sites do not fall within the scope of the provisions relating to commercial advertising requiring that the French version be “clearly predominant”. However, the Charter (and Law 96) consider that Internet sites are documents accessible to the public and, as such, must be at least available in Quebec in French or in a French version presented under conditions at least as favorable as the non- French version. [6] Jurisprudence has held that this requirement applies to persons having an establishment in Québec. It should be noted that the “recognized brand” exception relating to websites has not been modified by Law 96. As things stand, registered and unregistered non-French brands may continue to appear on websites. Web without French translation. It remains to be seen whether the regulations made under the Charter will subsequently be amended to modify this rule.

How to Comply with Law 96

The Public Display and Commercial Advertising Amendments will be effective three years from the date of royal assent, June 1, 2022. Trademark owners therefore benefit from a three-year grace period. to comply with the law. That being said, trademark owners should act quickly to file trademark applications, as current delays at the Canadian Intellectual Property Office are such that trademark applications can take up to three years to mature until registration.

After this grace period, a trademark owner who uses an unregistered trademark (including applied for trademarks) on a public sign or in commercial advertising exclusively in a language other than French may be subject to enforcement action. , including the payment of heavy fines.

In addition, since the definition of “corresponding French version” has changed to apparently include any French mark on the register, whether registered or not, brand owners are encouraged to take an inventory of their brand portfolios in order to to determine if they have French versions. brands in other languages. If so, the French version must also appear on a public sign or in advertising after the three-year grace period.

In addition, when a trademark in a language other than French appears on a public sign visible from the outside, the contractor must ensure that French is clearly predominant on such a sign, whether by use of a generic term or a French slogan.

Conclusion

Bill 96 will have a direct and significant impact on how trademarks can be used on public display and in commercial advertising. This may prompt some trademark holders to consider constitutional challenges to the Act on the basis of the division of federal and provincial powers, since the provisions relating to the use of trademarks may infringe on federal trademark jurisdiction. of business. While it remains to be seen how the OQLF will apply these new provisions, it is nevertheless imperative for trademark holders to develop an effective solution adapted to their business objectives in order to remain in compliance. For advice on the impacts of Bill 96 on your business and the use of your trademark, we invite you to seek advice from our Trademarks team.


[1] s. 58 Charter of the French language, CQLR c C-11. The term “markedly predominant” is defined as an inscription in French twice as large as its non-French equivalent (Regulation defining the scope of the expression “clearly predominant” for the application of the Charter of the French languageCQLR c C-11, r 11).

[2] s. 25(4) Regulation on the language of commerce and businessCQLR c C-11, r 9. The Act does not provide for any amendment to this regulation.

[3] Quebec (PG) c 156158 Canada Inc. (Maxie’s Bakery), 2015 QCCA 354 at para 106

[4] s. 58.1 Charter of the French languageCQLR c C-11

[5] s. 68.1 Charter of the French languageCQLR c C-11

[6] s. 52 Charter of the French languageCQLR c C-11

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