What to expect from Bill 96

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Businesses should be aware of the significant changes to the Charter of the French language concerning trademarks, say Lavery lawyers

HOTLY CONTESTED for over a year, Bill 96, An Act respecting French, the official and common language of Quebec, has been adopted, bringing major reform to the Charter of the French language in many fields including in labour law, contracts, and the services rendered by the civil administration. The new provisions also impose substantial changes on businesses that have adopted a non-French trademark, warn Isabelle Jomphe and Chantal Desjardins, partners, lawyers, and trademark agents at Lavery Lawyers. “For companies that have a presence in Quebec, better make sure that your non-French trademarks are registered – the clock is ticking!” says Jomphe.

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“For companies that have a presence in Quebec, better make sure that your non-French trademarks are registered – the clock is ticking”

Isabelle Jomphe, Lavery Lawyers

The narrowing of the trademark exception Before the adoption of the amendments, the recognized trademark exception provided that non-French trademarks could be used in Quebec, without a French translation, with one condition: the French translation of the trademark was not registered. With the amendments of Bill 96, it is still possible to use a non-French trademark, but the conditions of the exception are different. First, the non-French trademark must be registered. Second, no application is filed for the French translation of the trademark. Failure to comply with these new rules, once the three-year transition period has passed, will result in the obligation to add a French translation of the mark to product labelling, advertising, and public signage.

Though this requirement does impose a burden on businesses, “we always recommend registering trademarks, as it is a valuable asset for any company – this will just be another incentive to do so,” Jomphe notes, but adds that the real challenge is that a trademark cannot be registered overnight. As a matter of fact, trademark registration process currently takes at least three years in Canada. The transition phase of three years for the changes to come into full effect “appears to be a bit short, considering the backlog at the Trademarks Office.”

Desjardins says that although there is a possibility of expediting matters for examination in certain circumstances, “we are doubtful it would apply to questions related to a non-French trademark – we will certainly test it, but the conditions are restrictive.” Potentially, the Canadian Intellectual Property Office may understand that the new requirements are so heavy that expedited examination will be the only way to help businesses establish their new marks in the province. Both lawyers would have welcomed a more pragmatic approach in the bill. From a practical perspective, it would have made more sense that businesses be required to file a trademark application – which can be done quickly – as opposed to having a trademark registration, considering that companies do not have much control over the registration process.

“That’s a real issue for businesses,” Jomphe says. “Those who have not yet registered should hurry – time is of the essence.” Public signage: from French being sufficiently present to markedly predominant If a company’s public sign outside of its premises is using a non-French trademark or business name, Bill 96 requires the French language on the sign to be “markedly predominant,” which is defined as having a much greater visual impact – in other words, it must be twice as large in size as the non-French components. This is a big change compared to the current criteria, which call for “sufficient presence of French.” In determining whether a sign meets this higher bar, it’s important to remember to disregard the visual field occupied by the non-French trademark or business name: if there is nothing else on the sign, apart from the trademark or business name, it does not comply, since there is no markedly predominance of French. Also, if there’s any text in a language other than French on the sign, the business must then assess whether French is markedly predominant.

“We expect to provide more advice to clients who will need to consult with us concerning compliance, and clients will need to be much more disciplined in order to protect their rights in terms of trademarks”

Chantal Desjardins, Lavery Lawyers

“Some provisions will be quickly tested before the courts because there is a controversial aspect to them; others will be burdensome for companies – especially those located elsewhere but established in the province – in terms of the non-French marks, trade names, [and] commercial signage,” says Desjardins. “We expect to provide more advice to clients who will need to consult with us concerning compliance, and clients will need to be much more disciplined in order to protect their rights in terms of trademarks.” Looking ahead Jomphe says every company should audit its current trademark portfolio if they do business in Quebec – or intend to – and if they’re using non-French trademarks that

Though people can successfully file their own applications, “considering what’s at stake here, you want to make sure that your application will go through,” Jomphe adds. “There’s a lot of work to do in the background before launching new trademarks in the marketplace. Businesses spend lots of time and money on this process, and don’t want to effectively waste those investments by finding out they do not comply with the Charter. This requires action and attention now; every day counts.” Though the changes will be a burden, “it’s not going to stop business in the province – traders want to trade,” Desjardins says. “But they should take action to get ahead of the changes where possible.”

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are not yet registered, they should not delay filing their application. Businesses should also approach the audit with a broad view – for example, keep in mind that a slogan can be registered as a trademark. And don’t forget future marketing plans. In fact, the best course of action is to consult at the early stage of creation, says Desjardins, before the brand is actually adopted, to make sure that the mark is registrable and compliant with the Charter of the French language.

29% - websites

25% - language of service

21% - public signage

11% - commercial publications, job applications, invoices, contracts, etc.

7% - product labelling, manuals, etc.

3% - working language

6% - other reasons

Number of complaints filed with Office de la Langue Française: 4,326 between April 1, 2020 and March 31, 2021 Nature of complaints:

29% - websites

25% - language of service

21% - public signage

11% - commercial publications, job applications, invoices, contracts, etc.

7% - product labelling, manuals, etc.

3% - working language

6% - other reasons

Number of complaints filed with Office de la Langue Française: 4,326 between April 1, 2020 and March 31, 2021 Nature of complaints:

29% - websites

25% - language of service

21% - public signage

11% - commercial publications, job applications, invoices, contracts, etc.

7% - product labelling, manuals, etc.

3% - working language

6% - other reasons

Number of complaints filed with Office de la Langue Française: 4,326 between April 1, 2020 and March 31, 2021 Nature of complaints:

2021: 6 cases - websites

2020: 6 cases - websites

2019: 34 cases - mainly for websites and public signage

2018: 20 cases - mainly for websites and public signage

2017: 12 cases - mainly for websites and public signage

Number of convictions by Court of Quebec

2021: 6 cases - websites

2020: 6 cases - websites

2019: 34 cases - mainly for websites and public signage

2018: 20 cases - mainly for websites and public signage

2017: 12 cases - mainly for websites and public signage

Number of convictions by Court of Quebec