Published in Brand Management Focus 2005.
The internet, instant messaging and satellite television have made the world smaller, giving companies a wonderful opportunity to market their products on a global level – as well as posing some interesting questions. It is possible to launch a product in any number of markets simultaneously. While the potential for creating a megabrand is huge, the pitfalls can be equally large. The international harmonization of intellectual property laws allows for some efficiencies, but brand owners must keep local nuances in mind. Canada, in particular, provides some surprising challenges.
Because Canada is part of North America, many brand owners may consider the country an extension of the US – thinking that what works in the US will work in Canada. But unlike the melting pot that is the US, Canada has long been known as a multicultural mosaic. While its anglophone population is widespread, there is a large French-speaking population whose importance is recognized by statute.
Both English and French are recognized as official languages in Canada under the Official Languages Act. It is important that foreign companies considering branding for the Canadian market understand the impact of that law as well as the Trade-marks Act, Quebec’s Charter of the French Language and the Consumer Packaging and Labelling Act. Equally important from a branding perspective is to demonstrate an appreciation for the political and economic strength of the francophone population within Canada, and French-speaking Canadians’ desire for products and services that acknowledge their language and culture.
The Trade-marks Act
The Trade-marks Act sets out the parameters within which a trade mark may be registered in Canada. The examiners will not only analyze a mark for descriptiveness in both English and French, but also consider whether the mark could be confused with another mark in either or both of Canada’s official languages.
In Scott Paper Co v Beghin-Say SA (1985), 5 CPR (3d) 225 at 231 (FCTD), Justice Strayer said:
"I have no doubt that the Registrar of Trade Marks and the court should be alert to the possibility of confusion between trade marks in either or both of Canada’s official languages. This is not only required by the constitutional and legal statutes of both languages at the federal level, but is also a reflection of the fact that there are several million bilingual Canadians who may associate words in one official language with their equivalent in the other."
When considering the issue of confusion between English and French trade marks, Canada’s Trade-marks Examination Manual instructs examiners to "carefully consider two marks that suggest the same idea even though they do not necessarily sound alike or look alike". In keeping with that instruction, a recent decision of the Trade-marks Opposition Board, in Essilor International (cie générale d’optique) v Rampage Clothing Co (2004), 36 CPR (4th) 371, the hearing officer found the mark R-WEAR for eyewear to be confusing in sound with AIRWEAR for eyewear, because the French pronunciation of the letter "R" sounds like "air". The marks differ in appearance and in the ideas suggested, but do sound alike when pronounced by a francophone consumer.
The test for determining confusion in the eyes of the average Canadian has been the subject of much jurisprudence. Justice Marceau, in the Federal Court of Appeal case Produits Freddy Inc v Ferrero SpA (1988), 22 CPR (3d) 346 at 350 [Ferrero], provided the basis for testing confusion in a bilingual Canada:
"The true basis for the notion [that there is an interrelationship between French and English worded trade marks] is that, in certain areas of the country, the use of trade marks in the language of the local majority is now encouraged with vigour by the local authorities and the general public so that translated versions of trade marks have become common place. If traders are expected to have, in those areas, trade marks worded in the local language, the buying public may more easily be confused by two trade marks which appear to be translated versions of the other."
The practical implication of this interrelationship is that an English-worded trade mark may infringe an existing French-worded trade mark that appears to be a translation of the English version. However, the exclusive test of the "average bilingual consumer" as set out in Ferrero was eventually settled by the Federal Court of Appeal in Pierre Fabre Medicament v SmithKline Beecham Corp (2001), 11 CPR (4th) 1, which set out a three-prong test for determining a risk of confusion: whether there is a risk of confusion to the average francophone consumer, the average anglophone consumer or, in special circumstances (discussed below), the average bilingual consumer. A trade mark that causes a risk of confusion in either of the country’s two official languages cannot be registered.
Foreign entities entering the Canadian market must be mindful of all three conditions of this test when introducing their trade marks to consumers.
Quebec’s Charter of the French Language
The province of Quebec’s Charter of the French Language provides detailed rules regarding the information that must appear in French on products sold in Quebec. Regulation 9.01 sets out use of the French language for commerce and business as follows:
7. The following inscriptions on a product may be exclusively in a language other than French: ....(4) a recognized trade mark within the meaning of the Trade Marks Act... unless a French version has been registered.
It is therefore important for foreign entities to register their trade marks in Canada if they plan to sell their products in Quebec, so that they may benefit from this exemption in Quebec’s language law. While it is possible to assert trade mark rights without registration, the registration is prima facie evidence of registrability, and therefore clearly indicates that the mark is a recognized trade mark.
Consumer packaging and labelling
In addition to Quebec’s language law, the federal labelling law and regulations govern bilingual labelling requirements across Canada. It is not enough, therefore, for consumer product companies to consider only trade mark law when planning their branding in Canada. They must also ensure that the labelling of their products satisfies the requirements of the Consumer Packaging and Labelling Act and Regulations. Although meeting the labelling requirements in this Act may not directly require altering the trade mark itself, the look and feel of the product image may be affected. The provisions in the Act supersede the provisions of other legislation by requiring that labels on products sold in Canada be bilingual if more than 10% of the population in the area in which the product is sold is francophone. This legislative requirement, enforced by the designated inspectors from the Ministry of Consumer and Corporate Affairs, is consistent with Justice Marceau’s assessment in Ferrero, discussed above.
Companies should remember that even when a trade mark is registered, the registration does not exempt descriptive words that make up part of the mark from appearing in the other official language. Section 10 of the Consumer Packaging and Labelling Act provides that a label containing a declaration of net quantity of a prepackaged product must be applied to the pre-packaged product in a way that shows the identity of the pre-packaged product in terms of its common or generic name. The bilingual requirements in the Regulations require that all information required by the Act be shown in both official languages, except the identity and principal place of business of the person by or for whom the pre-packaged product was manufactured, processed, produced or packaged for resale, which may be shown in only one of the official languages.
For example, if the trade mark is a logo for an alcoholic beverage and the generic name of the beverage appears in the logo, the description of the beverage must appear in both languages. Weighing in on language and trade mark issues, Justice Cattanach, in Saccone & Speed v Registrar of Trade Marks (1982), 67 CPR (2d) 119 at 127 (FCTD) [Saccone] said:
"The label was revised as a direct necessity to comply with the provisions of the Consumer Packaging and Labelling Act and the Regulations thereunder. The additional verbiage added to ensure compliance therewith is to be disregarded. The addition of that additional wording necessitated a modification of the design to accommodate the language required to be added. This was done but in doing so the appellant exercised care to preserve the dominant features of its trade mark."
Justice Cattanach (at 128) proceeded to apply the Canadian test of "substantial difference" to the variations made to the registered mark:
"In the reasons expressed the changes dictated by compliance with the law and the tasteful revision of the design to do so [do] not detract from the main features of the trade mark and accordingly are not such as to confuse or deceive the public in any way. ... Putting and applying the test in yet another way there is no "substantial difference" in the trade mark as used from that as registered which is contrary to the view expressed by the acting registrar."
The principles relied upon in this case, in the context of deviation from a registered trade mark, were articulated and applied again in Gariepy Marcoux Richard v Promotions Cobelli Ltee (1994), 59 CPR (3d) 548 at 550 [Gariepy]:
"Principle 1 - Use of a mark in combination with additional material constitutes use of the mark per se as a trade mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade mark. Principle 2 - A particular trade mark will be considered as being used if the trade mark actually used is not substantially different and the deviations are not such as to deceive or injure the public in any way..."
In this case, the owner held a bilingual registered trade mark PASSEPORT EPARGNE/SAVINGS PASSPORT. However, the evidence revealed that the mark had been used commercially only as the French phrase PASSEPORT EPARGNE. The hearing officer held that the mark in use did not contain all the significant components of the registered mark and that the French-only mark was substantially different from the registered bilingual mark. The trade mark was expunged due to its lack of use.
This ruling indirectly reaffirms that the registration of a trade mark in one of the official languages does not equate to registration of the directly translated mark in the other official language. The hearing officer considered a mark bearing PASSEPORT EPARGNE different in all respects from a mark bearing SAVINGS PASSPORT, and certainly different from the registered mark bearing both phrases.
While Justice Cattanach, in Saccone, was sympathetic to the plight of a brand owner required to change its mark because of labelling laws, the courts are generally not as generous, as shown by the decision in Gariepy. The largely fact-driven basis for such decisions does not provide a standard test that brand owners can rely on. As a result, brand owners would be wise to have two registrations for their marks, one in each official language.
It is important for brand owners who are planning to introduce a trade mark in Canada to take steps not only to protect their trade marks through registration, but also to consider how labelling their products to comply with the Consumer Packaging and Labelling Act and Regulations may materially change the marks.
Companies can maintain a unilingual trade mark portfolio in most countries; however, it is imperative that for the Canadian market, they consider protection of the French- or English-language equivalent of their marks to, first, comply with the Consumer Packaging and Labelling Act and, second, ensure that their trade marks are used as registered, thereby avoiding expungement proceedings alleging that the marks were used in a materially different way from their registered equivalent. Perhaps most important, the significant francophone population in Canada will appreciate trade marks that incorporate its native tongue.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.