Important Notice: The Québec government has announced its intention to modify the French Charter in order to better protect the French language in Québec. We do not know precisely when these changes will come into force, nor what they will entail. That said, we know that the Québec government wishes to announce these changes sometime in 2021. As soon as we know more, our firm will issue a publication advising of these changes and their coming into force, and make any necessary amendments to our French Language Requirements in Québec series.
In 1977, the Québec government adopted the Charter of the French language (R.S.Q. c. C-11) (French Charter), giving the French language the status of official language in Québec and making its use mandatory in all spheres of public life in the province.
In Smart & Biggar’s “French language requirements in Québec” series, we introduce the French Charter (Part 1) and explore how it applies to the sphere of commerce and business. More particularly, our series gives an overview of the rules for inscriptions on products and accompanying documentation (Part 2), the language used in commercial publications, including websites and social media (Part 3), and public signs, posters and commercial advertising (Part 4). In subsequent articles, the rules for business names as well as the complaint process and the fines for violating the French Charter and its regulations will be covered.
This article, Part 5 in the series, explores the “recognized trademark exception”. As a reminder, this exception may apply to inscriptions on products, commercial publications as well as to public signage and commercial advertising.
“Recognized trademarks” and the exception to the French Charter rules
The “recognized trademark exception” is found in the Regulation respecting the language of commerce and business (R.S.Q.c. C-11, r.9) (Regulation).
A “recognized trademark” is a mark that is registered in Canada or a common law mark (i.e. a trademark that is used in Canada but is not registered).
The exception to the French Charter states that a “recognized trademark” may be in a language other than French, unless a French version of the mark has been registered.1 This exception is key in avoiding translating trademarks into French—which may not be ideal from a trademark perspective—and to notably preserve the integrity and the distinctiveness of valuable trademarks.
Later in the article, we will discuss how this exception can also be used strategically to avoid the French translation of certain inscriptions on products sold in Québec or their label (or parts thereof), so long as the inscriptions or label are registered in Canada.
When does the exception come into play?
Spoiler alert! To understand the process of claiming the “recognized trademark” exception, we must provide a brief overview of the complaint process before the Office québécois de la langue française (OQLF). The complaint process will be further detailed in our very last article in this series.
When the OQLF receives a complaint about a business using a language other than French, it normally investigates the matter and, if appropriate, requests that the business remedy the situation. In the scenario where the language other than French consists solely of a trademark and the business provides the OQLF with evidence that the mark is registered (i.e. a copy of the certificate of registration issued by the Canadian Intellectual Property Office) and confirms that no French version of the mark has been registered in Canada), the “recognized trademark” exception is normally triggered and settles the matter with the OQLF.
In the absence of a registration, a business may want to rely on its common law rights in Canada. The problem with this approach is that the OQLF does not have the resources nor the expertise to manage and assess evidence of common law rights. In such a case, the OQLF will refer the matter to the Director of Criminal and Penal Prosecutions who, if the case warrants it, will bring a penal action against the business before the Court of Québec. Case law suggests that this burden is not a light one. As such, if a business decides to rely on the “recognized trademark” exception, in the absence of a registration, it will have to prove its common law rights in Court, and this means running the risk that the Court will decide against it, including ordering the payment of a fine. Such a decision being made public and subject to media scrutiny could potentially result in bad press in Québec.
Pending trademark applications in Canada
The OQLF would normally not grant any weight to a pending trademark application; recognition comes through registration, meaning that the OQLF will generally only considerer the “recognized trademark” exception for marks that have been registered.
Let’s discuss how this exception can be used in practice.
Tips for utilizing the “recognized trademark” exception
A business may consider seeking trademark registration for “certain inscriptions” that appear on its products or their packaging as an alternative to translating them into French.
“Certain inscriptions” may consist of slogans, expressions, logos combined with inscriptions, parts of labels or, in certain cases, entire labels. These can all be considered for trademark registration. Other items may also be considered, depending on the circumstances.
This approach is premised on the fact that the applied-for “mark”, when considered as a whole, will be considered registrable by the Trademarks Office, which includes passing the tests of inherent distinctiveness and not being clearly descriptive. In practice, to the extent that the applied-for trademark contains at least some distinctive material, and is otherwise registrable, this approach should work.
In that regard, it is important to note that, at a minimum, obtaining a trademark registration in Canada currently takes more than 3 years. As such, relying on the “recognized trademark” exception in Québec requires good planning.
In view of the registration delay, businesses need to ensure that between the time they apply to register and the time the registration issues, the mark has not changed to the point where it no longer corresponds to the mark covered by the registration. In such a situation, relying on the “recognized trademark” exception may no longer be possible.
Also, consider that notwithstanding the above, certain inscriptions on products must be in French including those pertaining to safety – we refer you to the second article in this series for further detail – or other inscriptions that are mandatory under various pieces of legislation such as the Consumer Packaging and Labelling Act.2
The next article in this series, Part 6, will explore the rules governing the display of a “recognized trademark” outside buildings.
1. Regulation, sections 7(4), 13(4) and 25(4).
2. R.S.C., 1985, c. C-38.