On January 10, 2024, the Regulation to amend mainly the Regulation respecting the language of commerce and business (the “Draft Regulation”) was published in the Gazette officielle du Québec. The Draft Regulation was eagerly anticipated by the legal community and businesses affected by the amendments to the Charter of the French Language (the “French Charter”) introduced in June 2022 by the Act respecting French, the official and common language of Québec (“Bill 96”). In this regard, we refer you to our most recent article “French-Language Requirements in Québec: Publication of the Draft Regulation to amend mainly the Regulation respecting the language of commerce and business” which provides the highlights of the Draft Regulation.
Our firm recently had the opportunity to discuss the Draft Regulation with representatives of the Office québécois de la langue française (the “OQLF”) and the Ministry of the French Language (“MFL”). The purpose of this article is to share the key takeaways from that discussion.
1. Generic and descriptive terms included in registered non-French trademarks on products
Under section 51.1 of the French Charter, a generic term or a description of a product included in a non-French registered trademark must be translated into French, and its French translation must appear on the product or on a medium permanently attached to the product.
This new requirement introduced by Bill 96 has led to much uncertainty. Our discussion provided us with the opportunity to clarify how the OQLF intends to apply this new requirement in practice.
A) Types of trademarks targeted by section 51.1 of the French Charter
The Government of Québec published an example (shown below) that sheds some light on how section 51.1 will be interpreted and applied by the OQLF:
(Source: Government of Québec)
In this example, where we assume that the entire label on the left is registered as a trademark in Canada, we note that the trademark “BestSoap”, which contains both a term that could potentially be considered descriptive (“Best”) and a term that could potentially be considered generic (“Soap”), is not translated into French on the right, which is considered compliant.
This suggests that the legislative intent for section 51.1 is to target the practice of some businesses to register entire labels or parts thereof including generic or descriptive language to avoid having to translate them into French. However, the trademarks contained in such registered labels, i.e. those terms or expressions that act as source identifiers such as “BestSoap” in the example above, do not need to be translated even if they contain terms that could be considered descriptive or generic. This interpretation of section 51.1 is in line with the comments of the then Minister of Justice during the parliamentary debates of February 17, 2022.
As it appears from our discussion with the OQLF and the MFL, this interpretation is also in line with how the OQLF intends to interpret and apply section 51.1.
We brought to the OQLF and the MFL’s attention the fact that section 51.1, when read in conjunction with the Draft Regulation, does not make such distinctions. We also mentioned that this inconsistency is problematic for businesses as they are at risk of facing legal actions from consumers, including class action lawsuits, pursuant to the newly introduced “right to live in French to the extent provided for in the Charter of the French language”, which was introduced to the Charter of the human rights and freedoms by Bill 961.
The OQLF and the MFL seemed receptive to our comments and communicated their understanding of the fact that modifications to the Draft Regulation should be considered to better capture the legislative intent.
B) The “greater prominence or availability on more favourable terms” requirement
The Draft Regulation provides that no generic term or description of a product included in a trademark in another language may be given greater prominence than that in French or be available on more favourable terms2.
In the example shown above for “BestSoap”, we note that the French translations were added directly under their equivalent in English, thereby changing the mark (i.e., the entire label) compared to how it is registered. Our concern with this example is that it suggests that registered trademarks may have to be altered to comply with the requirement. This could seriously undermine the rights of trademark owners, considering that brand integrity is key to maintaining rights in registration: owners should always use a trademark as registered, notably to avoid vulnerability in the context of non-use proceedings and/or loss of distinctiveness.
We received confirmation from the OQLF that the French translations do not need to appear directly into the mark as registered, i.e. under their equivalent in another language. As such, a registered label does not need to be modified provided the French translation appears somewhere else on the product or on a medium permanently attached to it, and the corresponding inscriptions in the other language are not given greater prominence than the French translation or available on more favourable terms.
C) Translating a word that exists in both French and another language but has different meanings
When it comes to translating non-French inscriptions on products, either to comply with section 51 or section 51.1 of the French Charter, we received confirmation that non-French words that appear in a French language dictionary and have the same meaning in French as in the other language need not be translated into French. Otherwise, translation is required. For example, a word such as “spray”, which appears in a French dictionary and has a similar meaning to its equivalent in English should not require translating. This requirement also applies for inscriptions appearing on commercial publications or in public signage and commercial advertising.
2. Engraved, inlaid, embossed non-French inscriptions on products
The French Charter’s current Regulation respecting the language of commerce and business3 provides the following exception: an inscription on a product may be exclusively in a language other than French if the product is from outside Québec and the inscription is engraved, baked or inlaid in the product itself, riveted or welded to it or embossed on it, in a permanent manner. However, inscriptions concerning safety must be written in French and appear on the product or accompany it in a permanent manner4.
The Draft Regulation proposes to considerably restrict this exception by removing from its application inscriptions that are “necessary for the use of the product”5.
It appears from the example published by the Government of Québec (reproduced below), that the interpretation of the wording “necessary for the use of the product” will be very broad.
(Source: Government of Québec)
This change, if adopted, would come into force fifteen days following the date of the publication of the revised Regulation respecting the language of commerce and business6.
We informed the OQLF and the MFL that this change would have a significant impact on businesses considering that to comply businesses may notably have to modify the molds of an important number of products, which is a long and costly process. Businesses would also have to address what we suspect will be large quantities of non-compliant products left in inventory on the date the new requirement comes into force.
3. “Markedly predominant requirement ” for public signs and posters displaying a non-French registered trademark outside premises
Under section 58.1 of the French Charter, public signs and posters displaying a non-French registered trademark visible from outside premises must comply with the “markedly predominant requirement”. Until the publication of the Draft Regulation, it was unclear how to comply with this new requirement. The guidelines provided under the Draft Regulation are essentially that non-French registered trademarks must be accompanied by terms in French such as a slogan or a description of the nature of the business or of the products or services offered, which terms must be at least twice as large as the non-French registered trademarks7. These guidelines are illustrated in the examples published by the Government of Québec, reproduced below.
- Trademark with a description of the nature of the business
(Source: Government of Québec)
- Trademark with both a description of the nature of the business and a slogan
(Source: Government of Québec)
- Trademark with a slogan and two descriptions of the nature of the business
(Source: Government of Québec)
We received confirmation that the requirement will be satisfied only if the cumulative surface occupied by the text in French (i.e., the size of the letters rather than the size of the surface on which the text in French is displayed) is at least twice as large as the size of the non-French registered trademark (as per section 27.9(1) introduced by article 9 of the Draft Regulation). We also understand that the OQLF will be reasonable with businesses that have taken steps to comply with this requirement by June 1, 2025, but have been unable to comply as of that date due to logistical or administrative obstacles outside their control.
It is also our understanding that additional guidelines illustrating how to comply with the changes set out in this article will be published by the Government of Québec in the months following the adoption of the Draft Regulation.
Please note that the Draft Regulation was subject to a 45-day consultation period following the date of its publication. This consultation period has ended, and it is our understanding that many associations and industry organizations have presented their comments to the MFL. We suspect that the Draft Regulation may be amended in the upcoming months. We encourage you to stay tuned for our upcoming publications on this subject.
The text of the Draft regulation is available on the Gazette officielle du Québec’s website.
For more information on the French Charter and the Draft Regulation, please contact a member of our Trademarks & Brand Protection group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
References
1. Section 3.1 of the Charter of human rights and freedoms, c. C-12.
2. Draft Regulation, article 9, section 27.2(2).
3. Regulation respecting the language of commerce and business, R.S.Q. c. C-11, r.9
4. Id., section 3(6).
5. Draft Regulation, article 2(2).
6. Draft Regulation, article 12.
7. Draft Regulation, article 9, sections 27.9 and 27.10.