Non-French trademarks in Quebec: Restricting the use of foreign-language trademarks in Canada
With the aim of promoting the use of the French language in commerce, the Quebec government adopted a bill on 24 May 2022 entitled ‘An Act respecting French, the official and common language of Québec’. Volha Parfenchyk explains the contents and implications of the new law.
Quebec has introduced a new bill restricting the use of foreign-language trademarks. The bill entitled ‘An Act respecting French, the official and common language of Québec’ officially became law on 1 June 2022, modifying the Charter of the French Language, the central legislative document of this predominantly French-speaking province of Canada.
The new law has introduced significant changes into the use of trademarks in Quebec, particularly related to the use of foreign-language elements.
Foreign-language trademarks in Quebec before the new bill
Before the adoption of the bill, ‘recognised’ foreign-language trademarks appearing on product packaging, advertisement or public signs in Canada did not have to be translated into French. Different types of trademarks fell within the scope of this previous rule, including both registered and common law (unregistered) trademarks. Common law trademarks are established in the course of trade and do not have to be registered to enjoy legal protection in Canada. The owners of such trademarks were thus not required to accompany their foreign-language (e.g. English) trademarks with a French translation.
Notably, this rule did not apply if a French-language alternative of the trademark was already available. If a French-language alternative of a trademark had been already registered and appeared in the Canadian Trademark Register, the French translation had priority and had to be used in commerce instead of the foreign-language equivalent.
What has the bill changed?
The bill substantially reduces the scope of use of foreign-language trademarks in Quebec. The first modification concerns the types of trademarks that are exempt from the obligation to be translated into French. To fall within the scope of exception, owners of common law trademarks must now register their trademarks. Should they fail to do so, they must translate their trademark into French and use the French-language alternative of their trademark.
The second modification concerns the use of generic terms in the trademark. The bill establishes that if a generic term or description forms part of the product trademark, this term must be translated into French and also appear on the packaging of the product or a label attached to the product. The bill introduces a three-year grace period for trademark owners to comply with the new rules.
Next steps for trademark owners
Trademark owners should consider registering their trademark in Canada, therefore, if they wish to be able to enjoy the exception for recognised trademarks provided by the Bill. As it might take up to several years to register a trademark in Canada, it is advisable to start preparing your trademark application now.
Where French-language trademarks have already been registered for products in Canada, these marks will not fall within the scope of exception and so trademark owners should ensure they are already using those French-language marks on product packaging, public signs or commercial advertising.
For further information or specific advice on this topic, please speak to your Novagraaf consultant or contact us below.
Volha Parfenchyk works in Novagraaf’s Knowledge Management department. She is based in Amsterdam.