Bill 96 and Trademarks: Public Signage and Commercial Advertising – Fasken

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On May 24, 2022, the Québec government adopted Bill 96, An Act respecting French, the official and common language of Québec (the “Act”), which modifies the Charter of the French Language (the “Charter”) adopted in 1977. The modifications brought by the Act will have far-reaching impact on the use of trademarks on product packaging, labelling, public signage and in commercial advertising. This bulletin covers the effects of Bill 96 specific to public signage and commercial advertising and how best to comply with these new provisions. The effects of Bill 96 on product packaging and labelling are dealt with in our companion bulletin.
In Québec, 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 “markedly predominant” in relation to 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 signage and in commercial advertising without an accompanying French equivalent, provided that a French version of the trademark was not registered. On public signs visible from the exterior of a building or commercial space within a mall, the same exception applied with the caveat that a “sufficiently present” French generic term or slogan also appeared on the sign. [2] The term “recognized trademark” had been interpreted to include both registered and common law trademarks; and a “sufficient presence” of French implied that French inscriptions were given permanent visibility and appeared in the same field of view as the non-French trademark 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 trademark to appear on public signage or in commercial advertising without an accompanying – and markedly 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. Consequently, a trademark that is composed of words in foreign languages may be equally affected by Bill 96. The Office québécois de la langue française (“OQLF”) enforcement authority has even asserted in the past that an invented trademark that includes a foreign language component may be “in a language other than French.”
Second, the registered 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 applied for trademarks, further reducing the scope of the amended exception, since what is considered a “French corresponding version” is now broadened.
Third, where a public sign displaying a non-French registered trademark is visible from the exterior, a French generic term or slogan must nonetheless appear on the sign and be “markedly predominant” in relation to the non-French trademark.
Concretely speaking, how will these amendments affect the rights of trademark owners in Québec? By way of example, use of the fictitious mark HARDWARE KING, in association with hardware store services, could potentially be affected in the following ways:
Furthermore, Bill 96 requires that if a sign visible from the exterior bears a business name that is not itself used as a trademark, and if that business name includes an expression derived from a language other than French, a French inscription such as a generic term or slogan must appear on the sign in a markedly predominant manner. [5]
Finally, it is worth noting that websites do not fall within the scope of the provisions relating to commercial advertising requiring that the French version be “markedly predominant”. However, the Charter (and Bill 96) consider that websites are documents that are available to the public and, as such, must minimally be available in Québec in French or in a French version presented under conditions at least as favourable as the website’s non-French version. [6] A line of cases have held that this requirement applies to persons having an establishment in Québec. It is worth noting that the “recognized trademark” exception relating to websites was not amended under Bill 96. As it stands, both registered and unregistered non-French trademarks may continue to appear on websites without a French translation. It remains to be seen whether regulations taken under the Charter will be subsequently modified to alter this rule.
The amendments relating to public signage and commercial advertising will come into effect three years from the date of assent of the Act, June 1, 2022. Trademark owners therefore benefit from a three-year grace period to come into compliance with the Act. That being said, trademark owners should act quickly to file trademark applications, since the current delays at the Canadian Intellectual Property Office are such that trademark applications may take up to three years to mature to registration.
Following this grace period, a trademark owner who uses an unregistered trademark (including applied for marks) on a public sign or in commercial advertising exclusively in a language other than French may expose themselves to enforcement action, including payment of hefty fines.
In addition, since the definition of “French corresponding version” has changed to apparently include any French trademark appearing on the register, whether registered or not, trademark owners are encouraged to conduct an inventory of their trademark portfolios to determine if they own any French versions of trademarks in other languages. Should this be the case, the French version must also appear on a public sign or in advertising following the three-year grace period.
Moreover, where a trademark in a language other than French appears on public signage visible from the exterior, business owners should ensure that French is markedly predominant on such a sign, whether through the use of a French generic term or slogan.
Bill 96 will directly and significantly impact how trademarks may be used on public signage and in commercial advertising. This may prompt some trademark owners to consider constitutional challenges to the Act on the basis of the division of federal and provincial powers, since the provisions relating to trademark usage may encroach on the federal jurisdiction over trademarks. While it remains to be seen how the OQLF will enforce these new provisions, it is nonetheless imperative for trademark owners to develop an efficient solution tailored to their business goals in order to remain compliant. To obtain advice on the impacts of Bill 96 on your business and your trademark use, 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 a French inscription that is twice as large as its non-French equivalent (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).
[2] s. 25(4) Regulation respecting the language of commerce and business, CQLR c C-11, r 9. The Act does not provide any modification of this regulation.
[3] Québec (AG) c 156158 Canada Inc. (Boulangerie Maxie’s), 2015 QCCA 354 at para 106
[4] s. 58.1 Charter of the French Language, CQLR c C-11
[5] s. 68.1 Charter of the French Language, CQLR c C-11
[6] s. 52 Charter of the French Language, CQLR c C-11
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