BILL 96 – Impact on IP Practice
by Mark Butler
On June 1, 2022, the National Assembly of Quebec passed Bill 96, An Act respecting French, the official and common language of Quebec. The purpose of the Act, from the Explanatory Notes, is to affirm “that the only official language of Quebec is French” and “that French is the common language of the Quebec nation.” In line with this broad yet pointed purpose, the Act enacts a wide-ranging series of amendments to various provincial statutes.
At the centre of these amendments, and unsurprisingly given their purpose, are changes made to the Charter of the French Language. The Charter is not a new document, having been first adopted in 1977, and persons doing business in Quebec have long been accustomed to compliance with its various requirements. Importantly, certain amendments to the Charter have implications for the use of trademark rights in La belle province.
The Changes to the Law
Pre-amendment, under regulation made pursuant to the Charter, recognized trademarks within the meaning of the federal Trade Marks Act could be displayed in a language other than French if there was no French version of the mark that was registered. This meant that non-French marks did not need to be registered in order to be exempt from the requirement that they appear in French on products—it was sufficient that they be ‘recognized’. Because of this, common law trademarks and marks in the process of being registered qualified for the exemption.
Bill 96 changes this exemption, now limiting it to only ‘registered’ trademarks within the meaning of the Trademarks Act. Registration is, obviously, a higher threshold than recognition, and therefore many non-French marks which benefitted from the previous exemption will no longer be so exempted. Once this amendment comes into force, only registered trademarks under the federal Act without a registered French version will be able to be displayed on products in a language other than French. However, the requirement does not stop there.
Where a registered trademark with no French version does benefit from the new exception, generic and descriptive terms included in the trademark will still need to appear in French on products on which the trademark is displayed. This requirement is aimed at preventing trademark owners from tacking words on to their registered non-French trademarks in an attempt to obviate the need for translation. While debating the Bill, Simon Jolin-Barrette, then Minister Responsible for the French Language, gave the example of “Softsoap Brand, Lavender and Shea Butter, washes away bacteria, deeply moisturize to hydrate skin”. According to Minister Jolin-Barrette, only ‘Softsoap Brand’ would not need to be translated.
Additional changes impacting trademark use come in the form of new requirements surrounding public signage. Under the new amendments, registered trademarks without registered French versions may appear on public signs, posters and in commercial advertising without a French version. But, where public signs and posters are visible from outside premises, French must be ‘markedly predominant’. This means that non-French registered marks ‘visible from the outside of premises’ must be accompanied by ‘markedly predominant’ French text.
The amendments to trademark display on products and public signage discussed in this section will come into force on June 1, 2025.
What this Means for Trademark Owners and Users
Many owners of non-French marks that do not qualify as registered trademarks under federal law will need to take action to continue using their marks after the coming into force of the above amendments in June of 2025. Registration of non-French versions of marks is the surest way to be compliant under the new laws. Given the lengthy delays in examination with the federal Trademark Office, trademark owners should act immediately where they wish to obtain registrations for their non-French marks, and may consider means of expedited examination, where possible.
Where trademark owners own registered marks without French versions, they should still check their marks for generic or descriptive language, as the new law states that such language must be translated even where the mark is registered with no French version.
Finally, trademark owners should be cognizant of how their marks are displayed in public. Where non-French registered marks are legitimately displayed and visible from the outside of premises, they should be accompanied by French text that would appear to passersby to be ‘markedly predominant’.
Contracts in Licensing
The Changes to the Law
Bill 96 enacts important changes to the language requirements of contracts of adhesion (where the terms are dictated by one party). Henceforth, parties may enter into non-French contracts of adhesion, but only where they have first had the opportunity to inspect a French version of the contract. One type of contract to which this requirement does not apply is ‘a contract used in relations with persons outside Quebec’.
Where parties have agreed to enter into a contract exclusively in English, any other materials related to that contract may also be drawn up in English.
These changes come into force on June 1, 2023.
What this Means for Franchisors
In the context of trademark ownership, the above changes to the law of contracts in Quebec will likely have implications for franchisors. In licensing marks in Quebec, the new language requirements in the formation of contracts of adhesion will be important where such contracts are used. Unfortunately, at this time it is not clear just exactly how wide of a scope is contemplated by the phrase ‘in relations with persons outside Quebec’. As this phrase comes to be better defined by the legislature, the courts, and the administrative officials tasked with upholding the Charter of the French Language, franchisors will come to better understand whether and to what extent they can qualify for this exemption.
by Mark Butler