On June 26, 2024, the Regulation to amend mainly the Regulation respecting the language of commerce and business (the Regulation) was published in the Gazette officielle du Québec. Since then, the Office québécois de la langue française (OQLF) has published on its website a guide – currently available only in French – on the new rules for trademarks appearing on products. Please note that the OQLF has not published an equivalent guide for public signage or commercial advertising.
This article details the clarifications made by the guide, as well as its apparent shortcomings.
For further information on this topic, please refer to our previous article entitled “Upcoming amendments to the Regulation respecting the language of commerce and business”, which summarizes the differences between the final version of the Regulation and its draft version published on January 10.
Clarifications
- Illustration of the requirements of equal prominence and availability on terms at least as favourable
Section 51 of the Charter of the French Language (the French Charter) sets out the general rule applicable to inscriptions on a product, its container or its packaging, and provides that no inscriptions in a language other than French “may be given greater prominence than that in French” or “be available on more favourable terms”. This rule applies to the French translation of a generic or descriptive term included in a registered or common law trademark that appears on the product itself or on a medium permanently attached to it, effective June 1, 2025.
According to the guide, these requirements mean that inscriptions in another language should not appear more prominently than those in French, and that the consumer should not have to make any extra effort to see information in French compared to that in another language.
- Trademarks covered by section 51.1 of the French Charter
The guide provides two examples of product packaging bearing registered trademarks that will be considered compliant with section 51.1 of the French Charter as of June 1, 2025:
Example 1
Example 2
(Source: OQLF)
The guide specifies that the two examples of packaging shown on the left hand side above, bearing only registered, English-language inscriptions, are compliant with the French Charter until only June 1, 2025.
Thus it would appear that section 51.1 of the French Charter specifically targets entire labels or portions thereof that are (i) registered as trademarks and (ii) include generic or descriptive language (e.g., “Toothpaste”, “Moisturizing hand soap”, etc.), in addition to expressions or words that act as source identifiers (i.e., trademarks).
- Meaning of “name of the product as sold”
Pursuant to sections 51.1 of the French Charter and 7.1 of the Regulation, a generic or descriptive term included in a non-French registered or common law trademark must be translated into French, and its French translation must appear on the product itself or on a medium permanently attached to it.
The Regulation clarifies the scope of “generic” and “descriptive” by excluding the “name of the product as sold” and the “name of the enterprise”, which do not need to be translated.
In this regard, the guide confirms that the “name of the product as sold” refers to the primary trademark associated with a product, such as “Happy Teeth” or “BestSoap”, in the two examples provided above.
- Position of French translations of generic or descriptive terms on products
Example 1, above, confirms that it is acceptable for the French version of the generic or descriptive terms to appear on a different side of the product than the side of the product on which the registered trademark appears.
Example 2, above, confirms that the French version of the generic or descriptive terms does not have to appear as part of the registered trademark but may instead appear elsewhere on the packaging.
Therefore, an entire label registered as a trademark does not need to be modified, provided that (i) the generic or descriptive terms therein are translated into French, (ii) the French translation of those terms appears (a) on the product itself or on a medium permanently attached to it, (b) at least as prominently as the non-French inscriptions, and (c) on at least as favourable terms.
- A product display must comply with commercial advertising regulations
The guide also confirms that a product display is considered commercial advertising. Inscriptions on a display must therefore meet the requirement that French be “markedly predominant”, meaning that French must have a much greater visual impact than any text in another language (i.e., occupy a space at least twice as large and offer at least equivalent legibility and visibility).
Shortcomings
- Meaning of “name of the enterprise” in the context of the definitions of “generic” and “descriptive”
Unlike the “name of the product as sold” (see above), the guide does not provide any clarification as to the meaning of the “name of the enterprise”, or any examples to illustrate the meaning.
- Secondary and tertiary brands
The guide indicates that ingredients, colours or scents associated with a product are examples of what may be considered “generic” or “descriptive” terms to be translated into French according to sections 51.1 of the French Charter and 7.1 of the Regulation.
Thus it would appear that secondary or tertiary trademarks associated with an ingredient, colour or scent (or consisting of one or more of these elements) may need to be translated into French even if they are registered or used and their French equivalents are not recorded on the Canadian trademarks register.
- Scope of the phrase “appears in the register kept according to the Trademarks Act”
The trademark exception for inscriptions on products provides that a non-French “recognized trademark” (whether registered or used at common law) displayed on a product, its container, its packaging or any document or object supplied with it, need not be translated into French, provided that its French version has not been registered in Canada.
Sections 51.1 of the French Charter (for registered trademarks) and 7.1 of the Regulation (for common law trademarks) have amended the exception significantly, including by specifying that the exception applies only where no corresponding French version “appears in the register kept according to the Trademarks Act”.
The phrase “appears in the register kept according to the Trademarks Act” could encompass active and valid registrations, as well as pending applications, abandoned applications and expunged registrations.
We were unable to obtain any clarification from the OQLF on the scope of this condition during our latest discussions. However, in the section of the guide titled “What will not change”, the OQLF mentions that if a French version of the trademark is registered in Canada, then it must appear on the products, which suggests that the OQLF’s interpretation of “appears in the register kept according to the Trademarks Act” is the same as “unless a French version has been registered”.
That being said, a prudent approach would still be to assume that withdrawing applications or cancelling registrations for French versions of non-French trademarks may not “restore” the trademark exception and translation into French will be required, at least until we obtain further clarification on this.
Hopefully, the OQLF will improve its guidelines over time to address these shortcomings.
We will continue to monitor developments in this matter and provide timely updates in due course.
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.