Bill 96: When the Charter of the French Language clashes with the Law of Trademark

Bill 96: When the Charter of the French Language clashes with the Law of Trademark

HeadshotTianchu Gao is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 24, 2022, the Québec government adopted Bill 96, one year after it was introduced. This Act modifies the use of French language in business and commerce in the province of Québec. Among a variety of aspects affected in business operations, the Act greatly tightened the requirements regarding the use of French in trademarks and public signage. Despite the controversies it instigated, Bill 96 has received Royal Assent and officially became law on June 1, with some provisions coming into force immediately and others having a three-year transition period.

Bill 96 is the first major amendment made to Québec’s Charter of the French Language (the “Charter”) since it was passed in 1977. Previously, a recognized trademark may appear on product packaging or public signage exclusively in a language other than French. It included both common law marks and marks registered within the meaning of the Canadian Trademark Act. Bill 96, however, stipulates that such exception can only be applied to registered trademarks, if no corresponding French version appears in the Canadian Trademark Database. Moreover, if a registered trademark benefiting from the Bill 96 exemption includes a “generic term or description” of the product, the term or description must be translated into French as well.

Where such trademark exception is invoked for public signs and posters that are visible from outside premises, the French must be “markedly predominant” over the trademark that is in another language. Compared to the previous requirement of “sufficient presence,” companies may need to make the French trademarks twice as large or of greater visual impact in order to stay compliant with the new law.

Non-compliance under Bill 96 may trigger harsher punishments, too. Besides administrative fines and potential suspension of the francization certificate, the Charter now allows people who feel their language right being violated to bring a civil action against the company. It also doubled the fines for a second offense and considers each day an offense persists as a separate offense.

These changes undoubtedly increased the costs for companies to run their businesses. Some of the companies need to make significant investments to re-design and manufacture new product packages, public signs, and posters. Trademark filings for unregistered trademarks should be made shortly since it often takes three or more years to secure a trademark registration in Canada.

More importantly, some question the constitutionality of the amendments brought by Bill 96. The Constitution stipulates that the regulation of trade and commerce is a federal and not a provincial power. Yet the Office of Québécois de la Langue Française (OQLF) has jurisdiction over any potential violation of the Charter. It remains to be seen how the courts will determine if the changes affecting federally protected trademarks are truly within the constitutional authority of the Quebec government.