On May 13, the Quebec Government introduced Bill 96 - An Act respecting French, the official and common language of Québec (the "Bill") that proposes new amendments to various pieces of legislation, including to the Charter of the French language. We invite you to consult our article for a summary of the primary consequences of the Bill for businesses operating or whose non-French trademarks are being used in Quebec.
One of these proposed amendments concerns the use of non-French trademarks in Quebec:
- Trademarks exclusively in a language other than French – Under Quebec's current French language laws, a "recognized trademark" within the meaning of the Trademarks Act may appear exclusively in a language other than French provided no French version of the mark has been registered. Bill 96 intends to restrict this "recognized trademark" exception for marks appearing on public signs, posters and commercial advertising (which currently refers to posted commercial advertising) as follows:
- In order for a trademark to appear exclusively in a language other than French on public signs, posters and commercial advertising, the mark must be registered within the meaning of the Trademarks Act and there must be no French version of the mark on the Trademarks Register;
- Public signs and posters visible from the outside of premises bearing a trademark in a language other than French must be markedly predominantly in French.
As per the current text of the Bill, common law marks (marks which are used in Canada without being registered), will, despite the current case law, no longer be allowed to be displayed in a language other than French on public signs and posters and in commercial advertising. In order for businesses to continue using their common law marks that are in English (or in another language other than French) on public signage and posted commercial advertising in Quebec, they will have to register said marks on the Canadian Trademarks Register. Otherwise, they will have to use a French version of their non-French marks.
Considering that this proposed amendment regarding trademarks will be in force three years following the date of the assent of the Bill, businesses should also be aware of the following with respect to trademark registration:
- The Canadian Intellectual Property Office is currently experiencing important delays in the examination of trademark applications and it may currently take up to 2 years before a trademark application is even examined; and
- Since the recent amendments to the Trademarks Act in June 2019, the Trademarks Office can now object to the registration of trademarks that it finds lack inherent distinctiveness.
Therefore, bearing in mind the above and in case the Bill is adopted in its current version, businesses that are currently relying on the exception for common law trademarks should immediately consider filing applications to register their non-French trademarks and seek legal advice on the registrability of said marks.
We also wish to remind you of the following other benefits provided by a Canadian trademark registration:
- a registration provides an exclusive statutory right to use a trademark throughout Canada with specified products and services (note that rights provided by the use of a non-registered mark are limited to the actual area/region in Canada in which a reputation associated with the mark has been developed through use and such reputation must be evidenced);
- a registration provides additional enforcement options against third parties (it allows for suing for i) trademark infringement, which has certain advantages over suing for the passing-off of an unregistered mark, and for ii) depreciation of goodwill (a depreciation of goodwill action does not require the establishment of a likelihood of confusion as to the source of the goods and/or services));
- a registration makes it easier to buy, sell and license trademarks;
- a registration facilitates the evidence of trademark rights in domain name disputes;
- a registration allows non-Canadian entities or individuals to register .ca domain names reflecting their registered trademarks;
- a registration facilitates the policing and enforcing of trademark rights on social media sites;
- a registration will benefit from some policing by the Trademarks Office (the Trademarks Office examines new trademark applications and will object to the registration of applications for trademarks which are confusing with registered trademarks or pending applications of third parties; additionally, registered trademarks are public notices of trademark ownership and will appear in the results of searches by the public for similar marks in association with goods and/or services which are related to those included in the registration. As such,the existence of a registration could discourage third parties from adopting a mark that is similar to a registered one);
- a registration will provide an additional ground for opposing third party applications for trademarks which are confusing with the registered trademark;
- a registration allows for the filing of a request for assistance ( "RFA") with the Canada Border Services Agency ("CBSA") (the recordal of an RFA with the CBSA facilitates the CBSA's verification and detention of shipments for goods that they suspect infringe registered trademark rights); and
- a trademark registration can be renewed indefinitely every 10 years.