Making the French Connection: Changing Requirements for Use of English Trademarks in Québec

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July 26, 2022

Amendments recently made by Québec to its language laws will have a significant impact on the rights of trademark owners to use English-language versions of their trademarks in the province. As discussed below, trademark owners who wish to continue using English versions of their marks will want to consider taking action now to in order to preserve their rights.

The changes to the existing legislation were introduced by Bill 96 (an Act respecting French, the official and common language of Québec) and will apply to all businesses operating or having employees in the province of Québec.

Requirements for Use of French Versions of Trademarks

The changes introduced by Bill 96 will mean that a trademark can be displayed on a product solely in a language other than French (i.e., without a French version) only if: (a) the trademark is registered with the Canadian Intellectual Property Office (“CIPO”); and (b) no French version of the mark has been registered as a trademark.

Accordingly, an English language registered trademark will not need to be translated into French, as long as a French version of the mark is not registered.

Even if a trademark meets the above criteria, if the registered mark also contains generic or descriptive words in a language other than French, then those words must be translated into French. Bill 96 does not provide definitions of what constitutes a generic or descriptive term. However, the Québec government has said that it will be enacting regulations that will provide guidance on this question. Presumably, the issue of genericness or descriptiveness will at least be assessed relative to the goods on which a particular trademark is displayed such that words within a trademark that are everyday English words, but are not descriptive of a character or quality of the goods on which they are displayed, will not be considered to be generic or descriptive.

Bill 96 also contains various other changes that will have an impact on the manner in which a business can use a language other than French in the operation of its business, such as use on signage.

The changes discussed above will take effect on June 1, 2025. If a business does not bring its practices in line with the new law by that date, it will be at risk of significant sanctions including fines and the revocation of permits that have been granted by the province.

Getting a Registration

Although June 1, 2025 may appear to be plenty of time for a business to bring its activities in line with the changes mandated by Bill 96, one area where a business will need to act quickly is with respect to the registration of English versions of its trademarks. For example, given the current backlog at CIPO, it often takes longer than three years to register a trademark in Canada. There are, however, measures that a trademark owner can take to speed up this timeline.

For example, restricting the goods/services in a trademark application to the pre-approved terms contained in the CIPO Goods and Services Manual can speed up examination by approximately 1 ½ years. According to the latest statistics published by CIPO, in the case of applications that contain only pre-approved goods/services, it is currently examining applications that were filed in September 2020. By way of contrast, for applications that do not exclusively use the pre-approved goods/services, CIPO is currently examining applications that were filed in February 2019.

Additionally, CIPO will expedite examination of an application if the applicant can demonstrate that it meets one of the following four criteria:

• a court action is underway, or expected, in Canada with respect to the applicant’s trademark in association with the goods and/or services listed in the application;
• the applicant is in the process of combating counterfeit goods at the Canadian border with respect to the applicant’s trademark in association with the goods and/or services in the application;
• the applicant requires a registration in order to protect its intellectual property rights from being severely disadvantaged in online marketplaces; or
• the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline, following a request by a foreign intellectual property office.

If an applicant can demonstrate that it meets one of the above criteria, its application will typically be examined within a matter of weeks.

Recommendations

In view of the above, a trademark owner who wishes to be able to continue using an English version of its trademark without the need to also display a French version may wish to take action now to apply to register an English version of its mark. Additionally, a trademark owner who does file an application should consider using only the pre-approved goods/services in its application and/or requesting that CIPO expedite examination of its application so that it will obtain a registration prior to June 1, 2025.

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