Alea Jacta Est – Final Version Of Regulation Under Bill 96 Amending Québec's Charter Of The French Language Finally Published

The Québec government published today in its final form the regulation (Regulation) that will amend the trademark use provisions in the existing Regulation respecting the Language of Commerce and Business following the enactment of Bill 96 on June 1, 2022. Readers will recall that revision of the current regulation became necessary due to uncertainties raised by Bill 96, particularly concerning the use of non-French trademarks on products sold in Québec and on store-front signage of Québec stores. The Québec government published a draft regulation on January 10, 2024, to address these uncertainties, however, some remained. A consultation period followed, and the Québec government seemed to have considered many issues raised during consultation. Of note, the trademark exception will again apply to recognized (i.e. registered and unregistered) trademarks.

Here are the key highlights from the Québec Regulation amending the Regulation respecting the Language of Commerce and Business, including our comments on the new provisions that significantly differ from the draft regulation.

Inscriptions on Products:

Under the Charter of the French Language, any text on a product, its container, wrapping, or accompanying documents or object, must be in French. Translations in other languages are allowed, provided they do not receive greater prominence than the French text or are available on more favourable terms. The well-known exception for "recognized trademark" permits the use of trademarks (whether registered or not) exclusively in a language other than French.

As many brand owners know, Bill 96 restricted the application of the "recognized trademark" exception to "registered" marks and required that marks containing language that is generic or descriptive of the goods be translated into French and appear on the product or a medium permanently attached to the product.

• The "recognized trademark" exception is back. Readers may recallthat the draft regulation added a provision that included a pending trademark application as a "registered trademark" used on products (under new section 51.1 of the Charter of the French Language). This was a significant development for businesses and Québec consumers alike, as it meant that businesses did not have to wait for their trademark registration to be finalized before benefiting from the trademark exception. However, it was inconsistent with the language in new section 51.1 since a trademark can either be registered or pending – it cannot be both.
  
  What's new? The Regulation still repeals the current trademark exception, but replaces it with a very similar one: a recognized trademark within the meaning of the Trademarks Act, other than a trademark referred to in section 51.1 – thus suggesting that the trademark does not need to be registered – may be drawn up, even partially, on a product only in a language other than French, as long as no French version appears in the Trademarks Register (which only contains registered trademarks). This is a significant step back by the Québec government as it now seems to recognize (no pun intended) that the restrictive provision of section 51.1 requiring that a non-French trademark had to be registered was probably overreaching and may overlap with the federal Trademarks Act. This is even better news than what the draft regulation had provided, as businesses not only no longer need to register their non-French marks, but also will not need to file trademark applications to benefit from the trademark exception – although we nonetheless still recommend applying to register trademarks for greater protection of the marks in Canada.

• "Product". The Regulation confirms that "product" also encompasses the product's container, wrapping and accompanying documents. This clarification was brought by the draft regulation and dispels the uncertainty raised by some commentators who believed that the new requirement applied solely to the product itself and not its packaging.
  
  
• Definition of descriptive and generic. The draft regulation provided definitions of "descriptive", namely "one or more words describing the characteristics of a product", and "generic", namely "one or more words describing the nature of a product".
  
  What's new? The Regulation excludes from these definitions the name of the enterprise and the name of the product as sold and adds that designations of origin and distinctive names of a cultural nature are not considered descriptive or generic terms. This seems to be intended to bring as much as possible the new requirement in line with the Québec government's objective to prevent businesses from registering a label as a trademark to avoid the translation requirement. This will be a great relief for businesses as the trademark used as "the name of the product" will not need to be translated even if it contains descriptive/generic text. However, it is not clear if there can be more than one "name of product". For instance, it is common for products to bear more than one trademark. Uncertainty therefore remains for secondary marks used on products.

• Remaining uncertainties. There are still uncertainties that the Regulation has not addressed, such as the definition of a "medium permanently attached to the product". Further, the draft regulation provided that the non-French generic/descriptive terms within a registered mark could not be more prominent or be available in more favourable conditions than their French counterparts. This provision was left out of the Regulation. Some uncertainty therefore remains as to the size of the French translation of generic/descriptive terms: will it need to be as prominent as the other language, as provided by the general rule for text on products, or may they be in a smaller size, since section 51.1 applies despite the general rule?
• Phase-out period. The draftregulation provided that products that do not comply with the new requirement could still be distributed, sold at retail, rented, offered for sale or rent, or otherwise marketed, whether free of charge or not, until June 1, 2027, provided that (i) they were manufactured no later than June 1, 2025, and (ii) no French version of the mark was registered at the date of coming into force of this Regulation.
  
  What's new? The Regulation expanded this phase-out period to take into account changes to specific federal regulations: products manufactured between June 1, 2025 and December 31, 2025, that are subject to the new labelling standards provided by the Regulations Amending the Food and Drug Regulations (Nutrition Symbols, Other Labelling Provisions, Vitamin D and Hydrogenated Fats or Oils) or the Regulations Amending the Food and Drug Regulations and the Cannabis Regulations (Supplemented Foods) will be able to benefit from this extra 2-year phase-out period even if they were manufactured after June 1, 2025 (but no later than December 31, 2025).

Public Signage/Commercial advertising:

Under the Charter of the French Language, public signs and posters and commercial advertising must be in French. They may also be in both French and another language provided that French is markedly predominant. Similar to products, the "recognized trademark" exception permits the exclusive use of trademarks (whether registered or not) in a language other than French.

With respect to public signage, in new section 58.1, Bill 96 restricted the "recognized trademark" exception to "registered" marks. Moreover, even where the non-French trademark is registered, French must appear in a "markedly predominant" manner when such mark appears on public signs and posters visible from outside premises (e.g., store-front signage).

• The "recognized trademark" exception is back. The draft regulation did not provide that the trademark exception would apply to pending Canadian trademark applications, unlike for products.
  
  What's new? However, as it does for products, the Regulation, while still repealing the current trademark exception, replaces it with a very similar one: a recognized trademark within the meaning of the Trademarks Act, other than a trademark referred to in section 58.1 – again suggesting that the trademark does not need to be registered – may be drawn up, even partially, on public signs and posters and in commercial advertising only in a language other than French. This is again a significant step back by the Québec government as the restrictive provision of section 58.1 requiring that a non-French trademark had to be registered was too restrictive and overlaps with the Trademarks Act. While a trademark registration will no longer be required to be used exclusively in a language other than French, we still recommend filing applications for trademarks for better protection throughout Canada.

• Markedly predominant. The Regulation maintains the replacement of the "sufficient presence of French" requirement that came into force in 2016 for store-front signage (which could be smaller in size than the non-French trademark) and of the Regulation defining the scope of the expression "markedly predominant" for the purposes of the Charter of the French language, with a more stringent requirement. To comply with the "markedly predominant" requirement, space allotted to the French text has to be at least twice as large as the space allotted to the text in another language. Further, the French text's legibility and permanent visibility have to be equivalent to those of the text in another language. This suggests that the font size of non-French trademarks could be larger than any text in French, provided the space allotted to French is at least twice as large as the non-French trademark.
• French text to be added. The French text to be added to store-front signage, when a non-French mark appears, encompasses generic or descriptive of the goods or services, as well as slogans. A description refers to one or more words describing the characteristics of the relevant products or services. A generic term refers to one or more words describing the nature of the relevant products or services. Unlike for products, the Regulation does not exclude the name of the enterprise and the name of the product (or services) as sold and designations of origin and distinctive names of a cultural nature.
• Dynamic Signage. The Regulation adds a new provision addressing dynamic signage: in such dynamic signage that includes text in French and in another language displayed in alternation, the French text has a much greater visual impact if it is visible at least twice as long as the text in another language.

Readers will recall that the draft regulation would have amended provisions in the existing regulation that: modernized language relating to records and films; simplified language for use in commercial publications; explicitly included information used on website and social media; provided that text shown through an embedded software was subject to the Act; and, most importantly, required text necessary to the use of products embossed, engraved, etc. on products to appear in French. The Regulation no longer contains these provisions. It may be that a further regulation will be published to address these possible amendments.

The draft regulation also provides details on the new requirement for contracts of adhesion, a topic not covered in this article.

The provisions relating to trademark use will come into force on June 1, 2025.

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.