French Trademark Requirements in the Province of Québec: New Draft Regulations Contain Changes for Brand Owners
While English and French are the two official languages of Canada, the only official language of the province of Québec is French. The province of Québec represents about 23% of the Canadian population. Legislation exists creating obligations around language in business and commerce in the form of the Charter of the French Language (the « Charter »), enforced by the Office québécois de la langue française (the « Office »).
While the amendments to the Charter came out about two years ago, the highly anticipated related regulations were only released on January 10th, 2024, and provide some much-needed clarity on how to comply with the Charter. The new regulations are scheduled to come into force on June 1, 2025, and many of us in the Canadian Trademark Community have been working to understand and advise our clients accordingly. There is also a transitional provision whereby products manufactured before June 1, 2025, that do not comply with the Charter may be made available for sale until June 1, 2027.
In essence, the new regulations should make compliance with the Charter a bit easier, as the language provides more flexibility with the exception provision for registered or recognized trademarks not requiring translation, and for trademarks where the name of the goods appears in, or is, the trademark.
The regulations are stricter when it comes to exterior visible signage, where French must be present and predominant, the rationale being to reinforce the French character of the Québec business landscape; however, this article focusses on product packaging for trademarks that consist of English or non-French words.
The main difference between the previous regulations and the current ones, is that the exception for a registered trademark not requiring a translation to French has been expanded from “registered” to include « recognized ». Previously, a non-French trademark was permissible under the Charter so long as it was registered with CIPO; however, the new language with the term « recognized », which in fact reverts to an earlier version of the regulations, provides greater leeway for the trademark exception by which if a trademark is « recognized », a translation to French is not required.
While there remains uncertainty about what a « recognized » trademark is, we generally understand it to consist of a trademark that is neither pending nor registered with CIPO but that enjoys some common law rights through use in Canada and Québec in particular.
The regulations also specify that both pending and registered trademarks with CIPO benefit from the trademark exception, so there is still a great advantage to registering a trademark with CIPO, even if the mark were to remain pending for some time. Stated otherwise, a trademark that is the subject of a pending application before CIPO qualifies for the exception to translation under the regulations. This is certainly helpful given the ongoing backlog at CIPO for examining trademark applications which is measured in years, not months at the date of this article.
There is also an obligation to translate descriptive or generic terms even if they are part of the recognized or registered trademark. These refer to words that describe the characteristics of the product, such as a scent, colour, function, or other descriptive terms. These terms are often translated regardless as it makes good marketing sense to do so, and the requirement is also in-line with federal labelling laws that require that essential product information to be in both official languages.
There is an exemption for translating the name of the product “as sold” if it is also the trademark, but this is a contradiction in terms as ordinarily the trademark cannot also be the name of the product, thus many of us wonder how this provision will be interpreted and applied. This provision may be helpful if the name of the product is somehow an integral part of the trademark itself.
It is therefore helpful to consider only the distinctive elements of registered or recognized trademarks as the element benefitting from the exemption, and to ensure that descriptive terms also appear in French on the label in a manner equal to English.
It is my understanding that The Office is focussing its efforts predominately on compliance of exterior signage. It is my view as well that the Office will be cautious in the application of the new legislation as it does not want a repeat of a 2013 incident dubbed « Pastagate » which has its very own Wikipedia entry, where the Office received much negative press as it was criticized for its heavy-handed approach with an Italian restaurant in Montreal that listed « pasta » on its menu rather than « pâtes ». Then president of the Office, Louise Marchand, had to resign over it.
Any clients who have concerns about their trademarks requiring translation for compliance with the regulations by the June 1, 2025, deadline are invited to seek our expert legal advice for an assessment or audit of their trademarks and brands.
For more information:
https://en.wikipedia.org/wiki/Pastagate