INTA Builds Coalition in Response to Quebec’s Bill 96
Published: February 8, 2023
Christian Bolduc Smart & Biggar Montreal, Canada Chair, North America Global Advisory Council
In May 2022, the Quebec National Assembly amended the Charter of the French Language (the French Charter) and other related statutes with An Act Respecting French, known commonly as Bill 96. Around Bill 96, INTA—in coalition with the Intellectual Property Institute of Canada (IPIC) and concerned stakeholders—has been working with the Quebec government to offer input and insight on how to seek clarifications and definitions on matters that affect brand owners and consumers.
French is the official language and the lingua franca of Quebec. Since 1977, the French Charter has required that, in Quebec, inscriptions on products (or their containers/labels/wrapping) and commercial publications (including websites and social media) be in French, or in French and in another language, provided that the inscriptions in the other language are not given greater prominence than the inscriptions in French (e.g., in terms of size, position, font, color, etc.).
There are exceptions to the above general rule. For instance, a trademark registered in Canada or used in Canada that has become known (i.e., a common law mark) does not need to be presented in French unless a French version has also been registered in Canada. This exception is commonly referred to as the “recognized trademark” exception. Relevant parties have accepted long-established use to signify that consumers do, in fact, “recognize” wording as a source-identifying trademark and not simply product information.
On May 13, 2021, the Quebec government introduced Bill 96, which detailed many changes to the French Charter. Among other changes, Bill 96 further empowers the Office québécois de la langue française (OQLF), the body responsible for enforcing the French Charter and its regulations, to increase the fines for violations of the French Charter and/or its regulations and restricted the “recognized trademark” exception for public signage and commercial advertising.
Bill 96 was amended in February 2022 to introduce new Section 51.1 to the French Charter. Section 51.1 reads as follows:
Despite section 51, on a product, a registered trademark within the meaning of the Trademarks Act (Revised Statutes of Canada, 1985, Chapter T-13) may be drawn up, even partially, only in a language other than French where no corresponding French version appears in the register kept according to the Act. However, if a generic term or a description of the product is included in the trademark, it must appear in French on the product or a medium permanently attached to the product.
This is in addition to Section 58.1, which reads as follows:
Despite section 58, on public signs and posters and in commercial advertising, a trademark may be drawn up, even partially, only in a language other than French, provided the trademark is registered within the meaning of the Trademarks Act (Revised Statutes of Canada, chapter T-13) and no corresponding French version appears in the register kept according to that Act.
However, on public signs and posters visible from outside premises, French must be markedly predominant where such a trademark appears in a language other than French.
Bill 96 received royal assent on June 1, 2022. Sections 51.1 and 58.1 are to take effect on June 1, 2025. INTA’s advocacy focuses on Sections 51.1 and 58.1, both of which restrict the “recognized trademark” exception for product markings, public signs, and commercial advertising.
The Questions Raised
On December 1, 2022, INTA and IPIC met with OQLF to discuss Section 51.1. During the meeting, the coalition insisted that the entry into force on June 1, 2025, does not leave enough time for businesses to prepare adequately, notably, because there are significant backlogs for pending applications for registration with the Canadian Intellectual Property Office (CIPO), and because the interpretation of Section 51.1 is unclear.
Some of the questions asked during the meeting included:
- How will OQLF interpret “description of the product”?
- How will OQLF determine what portion of a trademark is “generic” or “descriptive”?
- How will the OQLF interpret the phrase “medium permanently attached to a product”?
- We were not told what “medium” means, but that it will have to remain attached to the product for its lifetime.
- Will the equal prominence requirement of Section 51 apply to the translation of the generic or descriptive term?
- Space being generally limited, this could have a serious impact on the labeling.
- Does the OQLF interpret “product” to include a product’s container, packaging, or labeling?
- What about small packages where space is very limited?
INTA and IPIC met again with OQLF on January 12, 2023. At this meeting, with the help of fictitious examples created for the purpose of illustrating the very specific and profound effect Bill 96 would have, the coalition posed questions and asked for feedback on the examples. Representatives from OQLF asked a variety of questions and appeared to understand the concerns around interpretation but did not make any commitments for future action or outcome.
As of June 1, 2025, only registered trademarks will trigger the trademark exception. In addition, if a registered trademark that appears on a product includes a generic term or a description of the product in a language other than French, the generic or descriptive term(s) will need to be translated into French and appear on the product or on a medium permanently attached to the product.
The French Charter covers a broad swath of items, including all text on product packaging and documentation (instructions, warranty, etc.), commercial publications (catalogs, brochures, order forms, receipts, as well as websites and social media accounts directed at Quebec), and public signs and public advertising, all of which must be in French. Where other languages appear on product packaging and documentation, no inscription in another language may be given greater prominence than that in French or be available on more favorable terms.
From the business and manufacturing side, the timelines for implementing changes to packaging are long. Those timelines can be even further lengthened for regulated products for which label changes might require approvals of other ministries. Lacking guidelines and direction, changes cannot be initiated with confidence. As a result, when the date of enforcement arrives, production may be delayed or stopped entirely. This means a risk of real supply chain challenges in a distribution climate that is already plagued with difficulties. Production and distribution in Canada are largely national; as a result, a decision that it is not cost-justified to make the necessary changes in order to comply with the new Section 51.1 could mean fewer products on the shelves, not only in Quebec but across Canada.
The lack of clarity currently imbued in Bill 96 makes it impossible for the manufacturer to know what, and if, packaging meets regulatory demands. It puts retailers in a position of being sued for inadvertently carrying products which do not meet the Bill’s requirements, and places manufacturers in similar legal jeopardy for missing an as-yet-unclear mark. This, combined with manufacturers that stop selling altogether because they decide the sales region isn’t worth the risk, will result in consumers in those jurisdictions no longer having access to the products they want to buy.
Brand owners may face additional complications as they evaluate whether to bring brands to Quebec or Canada. Specifically, because trademarks function as a source of origin of the product, which creates a commercial impression upon consumers that needs to be preserved, complying with the new requirements may jeopardize trademark rights or create confusion that could be manipulated by less than scrupulous companies attempting to exploit such confusion in the marketplace.
The consequences of noncompliance are significant. Bill 96 has expanded the government’s enforcement powers and has also introduced a new private right of action for all Quebec residents to seek injunctive relief and damages.
The legislation is intended to make labeling and product information accessible and intelligible to the French-speaking consumer in Quebec, Canada. And yet, on a practical level, the challenges for manufacturers and retailers may ultimately result in consumers in Quebec—and possibly other Canadian consumers—having less access to products available elsewhere.
Next Steps for INTA and the IP Community
As of now, there is no clear timeline for when or if guidance will be issued. INTA and IPIC will follow up with Minister of Economy, Innovation and Energy Peter Fitzgibbon and French Language Minister Jean-François Roberge to set up a meeting to discuss the implications for businesses and the likely impact on consumers in Quebec who may end up being penalized by not having access to the same product offerings available elsewhere in North America.
The clawback on the recognized trademark exception is even more troubling for new product launches because registration for a trademark—the threshold requirement for the trademark exception—can take more than four years due to backlogs with CIPO. This is an issue about which the IP community will need to become conversant regarding the potential negative impact this may have on consumer choice and trade options in Canada as a whole. The intellectual property community must seek opportunities to expand, not contract, the places where we can do business, to speak to more of the world, not less.
The coalition of concerned brand owners and other stakeholders is growing. It welcomes new voices to work with it and INTA to find a way to embrace the spirit of inclusion and access around Bill 96, while finding a way to assure that consumers, retailers, and manufacturers will be able to bring products and ideas to the markets of Quebec, and Canada as a whole.
If you’d like to join the coalition, please contact INTA’s Director of Government Relations Jenny Simmons.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
© 2023 International Trademark Association
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