On May 13, the Government of Quebec unveiled its proposed reform of the Charter of the French Language (the "Charter"), also known as Bill 101. This reform covers many spheres of society and the area of trademarks is no exception. Indeed, the bill entitled An Act respecting French, the official and common language of Quebec (hereinafter, "Bill 96") introduces significant changes to commercial signage in a language other than French.
The current version of the Regulation respecting the language of commerce and business1 (the "Regulation") provides that a mark defined as a "recognized trademark within the meaning of the Trademarks Act" (hereinafter, the "TMA") may appear exclusively in a language other than French in the public signage and commercial advertising of businesses operating in Quebec, "unless a French version has been registered."2
In recent years, the courts have been called upon to rule on the scope of the trademark exception for commercial signs without French generic terms.3 Faced with the insistence of the Office de la langue française on the presence of this type of generic term, retail giants brought the issue of the scope of section 25 of the Regulation before the courts. In 2015, the Court of Appeal upheld the exception for a "recognized" trademark under the TMA and confirmed that the commercial signage of Best Buy, Costco, Toys "R" Us and other retailers without generic French terms did not violate the Charter. However, the Court of Appeal did not have to analyze what the Regulation meant by a "recognized" trademark, since all the marks alleged by the plaintiffs in this case were duly registered in the trademarks register.
The term "recognized" suggests that a mark that is used but not registered enjoys the protection of section 25 of the Regulation. Section 2 of the TMA defines the term "trademark" as "a sign or combination of signs that is used [...]," whereas a mark that is registered is defined in the same section as a "registered trademark."
Following this decision of the Court of Appeal, the government amended the Regulation to introduce the obligation to ensure a sufficient presence of French in the exterior signage of a building on which a trademark is displayed in another language. Thus, section 25.1 of the Regulation requires that a trademark displayed in another language be accompanied by a generic term or a description of the products and services concerned, a slogan, or other term or indication in French.
Bill 96 completely reverses the current balance of the Regulation with respect to trademarks. The words "recognized within the meaning of the TMA" are now replaced by "a registered trademark within the meaning of the TMA." The proposed amendments to the Regulation would therefore impose a burden on businesses wishing to benefit from the French-language signage exception, a burden that does not exist under the current Regulation, namely to hold a trademark duly registered in the trademarks register.
This is particularly problematic for owners of marks that are already in use but have not been the subject of an application to the register. It appears from the current text of Bill 96 that a company displaying an unregistered mark on its storefront in a language other than French would no longer be able to avail itself of the exception if the bill were adopted. This situation is also problematic for marks that are intended to be used in the near future. Indeed, the current administrative delays at the Registrar's office are such that it takes more than two years from the time an application for a mark is filed to the time registration status is obtained, assuming that no obstacles are encountered along the way. It appears that, in the meantime, a retailer could not display such a mark in another language until registration is obtained.
The bill also broadens the scope of the current requirement in the Regulation that there be a "registered" French version of the mark. The use of this word in the current Regulation suggests that the trademark exception cannot be claimed if a French version has been registered. Bill 96 changes the language to require that "no corresponding French version appears in the register" maintained under the TMA. The phrase "appears in the register" is vague and suggests that the mere fact of having applied for registration of the French version of one's mark at any time, regardless of the current status of the application, would preclude the owner from claiming the French signage exception.
In this context, retailers doing business in Quebec would clearly be well advised to update and audit their portfolio of trademarks used in public signage or commercial advertising before Bill 96 comes into force.
1 CQLR, c. C-11, r. 9.
2 Regulation respecting the language of commerce and business, CQLR, c. C-11, r. 9, s. 25(4).
3 2015 QCCA 747.
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