Introduction
Restrictions on scope of recognised trademark exception
What brand owners need to know to be prepared
Since it was introduced in May 2021, a lot of ink has been spilled, to say the least, over Bill 96, which seeks to reinforce the provisions of the Charter of the French Language (the Charter).
On 13 May 2021, the government of Quebec introduced Bill 96 with an intent to "strengthen" the provisions in the Charter (for further details, see "Bill 96 and proposed reforms to the Charter of the French language in Québec"). The Bill has since remained at the committee stage, where it is being studied in detail by a parliamentary committee of Quebec's National Assembly. To date, it is unknown when the Bill will come into force, or what its final content will include when it does.
At the committee stage, certain amendments to the Bill may be proposed, discussed and adopted. This was notably the case during the 17 February 2022 session, when the committee members discussed amending Bill 96 to add section 51.1 to the Charter concerning inscriptions on products.(1)
Restrictions on scope of recognised trademark exception
For inscriptions on products, this new section not only proposes restricting the scope of the recognised trademark exception to registered trademarks, thereby eliminating common law trademarks (ie, unregistered trademarks), but also goes further in the case of registered trademarks containing generic or descriptive language, by requiring that such language be translated into French.
If enacted, these proposed amendments may significantly impact brand owners in Quebec. First, for inscriptions on products, the recognised trademark exception may no longer apply unless a mark is registered. Second, the exception may not apply to all registered marks. For instance, generic or descriptive portions of a mark may be excluded from the exception. This may prompt some brand owners to rethink their filing strategies.
During the 17 February 2022 session, this amendment was adopted by the members of the committee. This means that, unless the situation changes during the committee stage of the Bill, section 51.1 will be added to the Charter.
What brand owners need to know to be prepared
At this time, it is not clear how much time businesses will be given to comply with this section once the Bill comes into force. It is also not known how the Quebec Board of the French Language will apply this section in practice. Moreover, when and how the Regulation respecting the language of commerce and business will be amended to reflect the changes proposed by section 51.1 remains to be seen.
To be prepared, brand owners operating and selling products in Quebec should consider the impacts of the Bill as outlined above and seek advice from experienced trademark counsel.
For further information on this topic please contact Christian Bolduc or Stéphanie Girard at Smart & Biggar by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
Endnotes