Canada: Bill 96 And Trademarks: Public Signage And Commercial Advertising
Intellectual Property Bulletin

On May 24, 2022, the Québec government adopted Bill 96, An Act respecting French, the official and common language of Québec  (the "Act"), which modifies the Charter of the French Language (the "Charter") adopted in 1977. The modifications brought by the Act will have far-reaching impact on the use of trademarks on product packaging, labelling, public signage and in commercial advertising. This bulletin covers the effects of Bill 96 specific to public signage and commercial advertising and how best to comply with these new provisions.

Public Signage and Commercial Advertising Amendments

In Québec, the general rule, which remains unchanged under Bill 96, is that public signage and commercial advertising must be in French. Non-French inscriptions may appear on public signs and in advertising, but the French inscriptions must be "markedly predominant" in relation to the non-French equivalent. ¹

Prior to the adoption of Bill 96, a "recognized" trademark in a language other than French could appear on public signage and in commercial advertising without an accompanying French equivalent, provided that a French version of the trademark was not registered. On public signs visible from the exterior of a building or commercial space within a mall, the same exception applied with the caveat that a "sufficiently present" French generic term or slogan also appeared on the sign. ² The term "recognized trademark" had been interpreted to include both registered and common law trademarks; and a "sufficient presence" of French implied that French inscriptions were given permanent visibility and appeared in the same field of view as the non-French trademark without necessarily being side-by-side or of the same size. ³

With Bill 96, the scope of this exception is greatly reduced. ⁴ First, only registered trademarks will fall within the scope of the exception. For a trademark to appear on public signage or in commercial advertising without an accompanying - and markedly predominant - French translation, it must be registered. This applies not only to outdoor signage, but also to in-store signage and displays. It is important to keep in mind that this provision affects not only English trademarks, but any trademark in a language other than French. Consequently, a trademark that is composed of words in foreign languages may be equally affected by Bill 96. The Office québécois de la langue française ("OQLF") enforcement authority has even asserted in the past that an invented trademark that includes a foreign language component may be "in a language other than French."

Second, the registered trademark in question must not have a corresponding French version that "appears" on the Canadian register. This wording could be interpreted to include not only registered trademarks, but also applied for trademarks, further reducing the scope of the amended exception, since what is considered a "French corresponding version" is now broadened.

Third, where a public sign displaying a non-French registered trademark is visible from the exterior, a French generic term or slogan must nonetheless appear on the sign and be "markedly predominant" in relation to the non-French trademark.

Concretely speaking, how will these amendments affect the rights of trademark owners in Québec? By way of example, use of the fictitious mark HARDWARE KING, in association with hardware store services, could potentially be affected in the following ways:

• If HARDWARE KING is not yet registered, it must be accompanied by its French equivalent (e.g., ROI DE LA QUINCAILLERIE) on public signs and in commercial advertising, and the French equivalent must be markedly predominant.
• If HARDWARE KING is a registered trademark (in English only) it may appear on public signage or displays not visible from the outside and in commercial advertising without a corresponding French equivalent. On public signage visible from the exterior, it must be accompanied by a French generic term or slogan, which must be markedly predominant (which may mean, for example, that the generic words, CENTRE DE RÉNOVATION, would need to appear twice as large as HARDWARE KING).
• If HARDWARE KING is registered in English and a French version of the mark is also registered or applied for, then on all public signage and commercial advertising, it must be accompanied by its French version ROI DE LA QUICAILLERIE, which must also be markedly predominant (twice as large as HARDWARE KING).

Furthermore, Bill 96 requires that if a sign visible from the exterior bears a business name that is not itself used as a trademark, and if that business name includes an expression derived from a language other than French, a French inscription such as a generic term or slogan must appear on the sign in a markedly predominant manner. ⁵

Finally, it is worth noting that websites do not fall within the scope of the provisions relating to commercial advertising requiring that the French version be "markedly predominant". However, the Charter (and Bill 96) consider that websites are documents that are available to the public and, as such, must minimally be available in Québec in French or in a French version presented under conditions at least as favourable as the website's non-French version. ⁶ A line of cases have held that this requirement applies to persons having an establishment in Québec. It is worth noting that the "recognized trademark" exception relating to websites was not amended under Bill 96. As it stands, both registered and unregistered non-French trademarks may continue to appear on websites without a French translation. It remains to be seen whether regulations taken under the Charter will be subsequently modified to alter this rule.

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.