Canada: Minding Your Language When Branding

Last Updated: April 20 2005
Article by Joanne B. Nardi

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.

Final considerations

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions