Will Bill 96 Affect my Non-French Trademark?
On May 24, 2022, the Quebec National Assembly voted to pass Bill 96, An Act respecting French, the official and common language of Québec (“Bill 96”). Bill 96 amends the Charter of the French Language (“the Charter”) in various ways.
However, for the purposes of this blog, we will be focusing on how and if it will affect Non-French Trademarks used in Quebec that have not yet been registered under the Trademarks Act. In the past, both Registered and Non-Registered Trademarks used in Quebec, were excluded from the requirements under the Charter.
A Non-Registered Trademark, also known as a Common Law Trademark is one that is being used without a Federal Registration under the Trademarks Act.
However, with Bill 96 coming into play, these exclusions will now be limited to Registered Trademarks. A Trademark is Registered when it has been registered under the Trademarks Act.
New Rules for Public Signage and Labels
The most important changes brought on by Bill 96 will be those related to Public Signage and Labels on goods.
- Trademarks must be registered (under the Trademarks Act) to be excluded from the requirement for translation to French. Meaning, trademarks that aren’t federally registered will be subject to Bill 96;
- What that means in laymen’s terms is that if you are currently using an unregistered trademark (one that you have not protected federally), you will be required to translate it into French to affix it to signage or labels.
- Any generic terms included in a Registered Trademark, will be required to be in French;
- For example, Dove used in connection with chocolate, DOVE will allowed to remain in English, however the term “Chocolate” will have to be translated into French, i.e. “chocolat” in order to comply with Bill 96. This is because Bill 96 aims at combatting Registered trademarks which include non-descriptive and descriptive elements being combined to avoid having to translate the descriptive terms.
- Labels will also have to have French as the dominant language and that no other language on the label may be more prominent.
- Public signage will be affected as follows:
- If a Registered Trademark is displayed on public signage (visible from outside), the registered Non-French Trademark must be accompanied by a French descriptor. As an example, OLD NAVY can be displayed as an English only Registered Trademark, but it must be accompanied by the French descriptor “Les Vêtements” or similar. In essence the outdoor signage would read “Les Vêtements OLD NAVY”.
- If the signage is not visible from outside (located inside a mall), the French descriptor is not required to accompany the Registered Trademark. However, if there is French text on the sign, must be markedly predominant.
Fines and Enforcement
So how does all of this affect a business owner’s wallet?
- Bill 96 will allow the OQLF greater enforcement rights in applying fines on business owners who violate Bill 96 requirements.
- The fines for violation of Bill 96 for an individual range between $700 to $7,000 (as opposed to $600 to $6,000 previously), while any other entity would be faced fines of $3,000 to $30,000 (as opposed to the current $1,500 to $20,000).
- Moreover, if an entity has repeated offenses the OQLF would be given the rights to suspend or revoke a permit or any other authorization.
What steps can trademark owners take moving forward?
- Register your Trademarks in French; While this option may not be optimal given how most brands don’t translate well into English, OLD NAVY translates to VIELLE MARINE. However, business owners can also adopt a Brand in French to use in Quebec which differs from the rest of Canada, for example, SHOPPERS DRUG MART vs. PHARMAPRIX. Adopting French versions of your Non-French Trademarks may resonate more favorably to the French population of Quebec.
- Get your Non-French Trademarks Registered; If you are planning on using an English only Trademark in Quebec for your goods and/or services, get them Registered as soon as possible. Federal Trademark Registration is currently the only way to be excluded from the provisions of Bill 96. It is important to note that the current time to Register a Trademark in Canada is 12-36 months. Given the current timeline, getting your applications in as soon as possible is recommended.
While Bill 96 is not ideal for those carrying out business using Non–French Trademarks, it is part of the new reality of doing business in Quebec. The sooner business owners get their ducks in a row, the better.
If you have any questions whatsoever about Bill 96 or trademarks in general, we would be more than happy to discuss them.
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