Quebec Publishes Draft Regulations Under the Charter of the French Language

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January 30, 2024

On January 10, the Quebec government published for consultation its long-awaited draft regulations (the “Draft Regulations”) under provincial legislation, the Charter of the French language (the “Charter”). The consultation period ends on February 24.

Background

The Charter addresses the language of commerce and business in Quebec. It contains various provisions that govern the use of a language other than French on products, signage, advertising, etc.  In 2022, the Quebec legislature passed amending legislation, known as Bill 96, which further imposed some additional restrictions on the use of a language other than French when conducting business in the province.

Several key provisions of the Charter, as amended by Bill 96, are scheduled to come into force on June 1, 2025. The Draft Regulations are intended to provide clarity to some of the provisions in the Charter. As noted below, however, there are several areas where the Draft Regulations create considerable uncertainty. It is to be hoped that the consultation process being undertaken by the Quebec government will ameliorate some of the uncertainty and concerns that have arisen.

Although the Charter and the Draft Regulations also contain detailed provisions addressing the use of French on public signs and posters and commercial advertising, this bulletin will focus on those provisions dealing with the use of non-French trademarks on products.

Use of a trademark on a product, container, wrapping, document or object supplied with it

Section 51 of the Charter provides as follows:

51. Every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French. This rule applies also to menus and wine lists. The French inscription may be accompanied with a translation or translations, but no inscription in another language may be given greater prominence than that in French or be available on more favourable terms.

Bill 96 introduced new section 51.1, which will come into force on June 1, 2025 and provides an exception when it comes to the use of a non-French registered trademark. Section 51.1 provides as follows:

51.1. Despite section 51, on a product, a registered trademark within the meaning of the Trademarks Act … may be drawn up, even partially, only in a language other than French where no corresponding French version appears in the register kept according to that Act. However, if a generic term or a description of the product is included in the trademark, it must appear in French on the product or on a medium permanently attached to the product.

The Draft Regulations clarify that the word “product” in section 51.1 also includes its container, wrapping and any document or object supplied with it.

Registered trademark / pending trademark application exception

One of the concerns for businesses created by Bill 96 was the fact that the right to depict a trademark only in a language other than French was restricted to registered trademarks. The Draft Regulations have sought to address this concern by providing that, for the purposes of section 51.1 of the Charter, a registered trademark includes a trademark in respect of which an application for registration is pending. This exception is available as of the filing date of the application.

The importance of this new exception is highlighted by the fact that the Canadian Intellectual Property Office is currently dealing with a backlog of more than 4 ½ years of unexamined applications. As such, many trademark owners, even if they filed trademark applications well before now may nevertheless not be able to obtain registrations for their marks before June 1, 2025. Allowing a trademark owner to rely on a pending application for a non-French mark to avoid the obligation to translate such mark into French on its product will be a welcome addition for many businesses.

Inclusion of descriptions and generic terms in trademarks

One of the issues on which trademark owners and practitioners have been anticipating the introduction of draft regulations under the Charter has been the reference to descriptive terms and generic terms in section 51.1.

As noted above, section 51.1 limits the registered trademark exception by stating that if a generic term or a description of a product is included in a trademark, the terms must appear in French on the product or on a medium permanently attached to the product. The Draft Regulations are of little to no assistance in this regard as they merely provide that in section 51.1, a “description” refers to one or more words describing the characteristics of a product and a “generic term” refers to one or more words describing the nature of a product.

The Draft Regulations also provide that words included in a non-French trademark displayed on a product, container, wrapping or document or object supplied with it that describe the characteristics or nature of a product cannot be given greater prominence than their French translation or be available on more favourable terms.

These requirements will limit a trademark owner’s ability to avoid translating a non-French trademark, especially when one considers that a large proportion of trademarks include words that describe a characteristic or nature of a product.

A trademark owner who wishes to avoid having to translate its non-French trademark into French will therefore be placed in the difficult position of having to decide whether to take the position that its trademark contains words that describe a characteristic or nature of its product.

It is unclear from the Draft Regulations whether the obligation to translate a trademark will be triggered only when a separate word contained within a trademark is descriptive or generic or will also be triggered when a word appears next to other content without any separation.

Requiring a trademark owner to translate descriptive or generic elements into French will also prove problematic for many businesses not just because of the additional time, effort and expense associated with the preparation of new labeling. For example, a trademark owner may be put in the unenviable position of having to choose between potentially violating the Charter if it decides that translation is not required and being seen as having made an admission that part of its mark is descriptive if it chooses to translate such portion.

Even if a trademark owner makes the decision that it is necessary to translate one or more words in a trademark that appears on a product, it may prove difficult to develop labeling that will accommodate the non-French trademark and the French translation without having a negative impact on the visual appeal or distinct impression created by the trademark.

Confusion regarding the scope of the requirement to translate descriptive/generic words

The Quebec government has published a series of slides that, although they were meant to clarify the new obligations set out under the Charter and the Draft Regulations, have created a great deal of confusion.

More particularly, on a slide that was provided as an example of changes that would be required to the use of trademarks on products, the Quebec government chose the following example of a hand soap bearing the trademark BestSoap.

Interestingly, in this example, the Quebec government has indicated that it would only require that the scents (pear and lavender) and the statement about the product’s effectiveness be translated into French. By way of contrast, the BestSoap trademark would not need to be translated. This position is curious since the words “best” and “soap” would be considered by most people to be descriptive and generic, respectively, and would presumably be words “included in the trademark” in section 51.1 of the Charter.

If the Quebec government only intends that the obligation to translate descriptive and generic words apply to instructions, product contents and the like but not to trademarks then this would be a substantial relief to many trademark owners.

Limitations on the pending trademark application exception

The pending trademark application exception will not apply to the use of a trademark in commercial publications, on signage or in advertising.

Although it is helpful that the registered trademark exception has been extended to marks that are the subject of a pending application, it is uncertain why this extension has not been made equally applicable to trademarks that appear in commercial publications and on public signs, posters and commercial advertising.

Grace period

The Draft Regulations provide that if a product was manufactured prior to June 1, 2025 and no French-language version of the product’s recognized trademark was registered as of the date of publication of the regulations, then a product that is non-compliant with section 51.1 of the Charter may nevertheless be distributed, retailed, leased, offered for sale or lease, or otherwise offered on the market, until June 1, 2027.

There is, however, no exception for goods that were first sold prior to the publication of the regulations and are then resold at a later date. As such, sellers of used goods may find themselves offside the Charter if they fail to modify or translate, as the case may be, non-French trademarks appearing on such goods.

Recommendations

It is strongly recommended that trademark owners who are currently selling goods in Quebec or anticipate doing so in the future carefully review the Charter and the regulations introduced under such legislation and take the appropriate steps not only to comply with such legislation/regulations but also to take advantage of any available exceptions.

For example, a trademark owner should give serious consideration to registering any non-French trademarks in Canada prior to June 1, 2025, and, if doing so is not possible, then at least filing applications for such marks prior to that date.

 

 

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