Christian Bolduc, Stéphanie Girard
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”).
Smart & Biggar’s Trademarks team published an article on Bill 96 and proposed reforms to the Charter of the French language in Québec (May 2021), detailing the provisions relating to the language of commerce and business in the province. The Bill has since remained at the committee stage, where it is being studied in detail by a parliamentary committee of Québec’s National Assembly. To date, we do not know 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 February 17 session, when the committee members discussed amending Bill 96 to add section 51.1 to the Charter concerning inscriptions on products.1
Restrictions on the scope of the recognized trademark exception
For inscriptions on products, this new section not only proposes restricting the scope of the recognized trademark exception to registered trademarks, thereby eliminating common law trademarks (i.e., 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 recognized 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 February 17 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 Office québécois de la langue française (OQLF) 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. Smart & Biggar will continue to monitor developments regarding Bill
96 and will provide updates on any further changes regarding the recognized trademark exception.
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For more information on Bill 96 and the proposed changes to the French Charter and Regulation, please contact a member of our Trademarks & Brand Protection group for further guidance and assistance.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
1. Bill 96, section 42.1.