Bill 96 and Trademarks: Product Packaging and Labeling – Trademark

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On May 24, 2022, the Quebec government passed Bill 96,Act respecting French, official and common language of Quebec(there “Law“), which modifies theCharter of the French language(there “charter“) in several ways. The changes made by the law will have a significant impact on the way companies use trademarks on packaging, labeling, public display and in commercial advertising. This bulletin discusses the effects of law 96 with regard to packaging and labeling and how best to comply with these new provisions.

Changes to product packaging and labeling

Prior to the adoption of Bill 96, a “recognized” trademark in a language other than French could be used in Quebec on the packaging or labeling of a product without being translated into French, provided that a French version of the trademark is not registered.1The term “recognized mark” had been interpreted to include both registered and applied for marks as well as common law marks.2

With Bill 96, the scope of this exception is greatly reduced.3First, only registered trademarks will fall within the scope of the exception. In order for a trademark to appear on product packaging or labeling without a – and equally visible – French translation, it must be registered. It is important to keep in mind that this provision affects not only English trademarks, but any trademark in a language other than French. Therefore, a trademark made up of words in foreign languages ​​may also be affected by Law 96.Quebec office of the French language(there “OQLF“) the enforcement authority has even asserted in the past, albeit in a different context, that an invented mark that includes a foreign language element may be “in a language other than French”.

Second, the trademark in question must not have a corresponding French version that “appears” on the Canadian register. This wording could be interpreted to include not only registered marks, but also applied for marks, further narrowing the scope of the amended exception, since what is considered a “corresponding French version” is now expanded.

Third, even if a trademark in a language other than French is registered, if it is partially composed of a generic or descriptive term, this term must nevertheless appear in French on the packaging or the label of the product. It is unclear whether this French translation should be displayed at least as prominently as in the mark.

Concretely, how will these changes affect the rights of trademark owners in Quebec? For example, the use of the fictitious brand BLOOM, in association with pens, would be impacted as follows:

  • If the BLOOM trademark is not yet registered, it must appear on product packaging or labeling with a corresponding French equivalent with the same or greater prominence.
  • If the BLOOM trademark is registered (in English only), it may appear on product packaging or labeling without a corresponding French equivalent (“FLORAISON”).
  • If the BLOOM mark is registered in English and a French version of the mark (ex: FLORAISON) is also registered or applied for, then the French version FLORAISON must also appear on the product packaging or label with identical prominence. or higher.

However, if the fictitious registered trademark was BLOOM PRECISION PEN (for use in association with pens), the term “precision pen” would probably be considered descriptive in that case. Consequently, the use of the BLOOM PRECISION PEN mark would be affected as such (assuming that a French version of the mark does not appear in the register):

  • BLOOM PRECISION PEN may appear on product packaging or labeling exclusively in English, but a French version of the descriptive term “precision pen” (e.g., “stylo de precision”) must also appear on the packaging or label. label, possibly with at least the same highlighting of the words “precision pen”.

It remains to be seen how the OQLF will apply these changes in practice, especially since concepts such as “descriptive” and “generic” for trademark purposes fall under federal jurisdiction under federal law.Trademark Law.

How to Comply with Law 96

The product packaging and labeling changes will take effect three years from the date of assent, June 1, 2022. Brand owners therefore benefit from a grace period of three years to comply with the law. That being said, trademark owners should act quickly to file trademark applications, as current delays at the Canadian Intellectual Property Office are such that trademark applications sometimes take up to three or more years to mature to registration.

After this grace period, a trademark owner who uses an unregistered trademark (including applied for trademarks) on product packaging or labeling exclusively in a language other than English may be subject to enforcement action, including the payment of heavy fines.

Additionally, since the definition of “corresponding French version” has changed to seemingly include any French mark on the register, whether registered or not, brand owners are encouraged to take an inventory of their brand portfolios to determine if they have French versions. brands in other languages. If so, the French version must also appear on a product’s packaging or label after the three-year grace period.

Finally, even if a trademark is registered in a language other than French, if it contains a generic or descriptive term in that other language, this generic or descriptive term must appear in French after the three-year grace period. Under Canadian (federal) packaging laws, the common or generic name or function of a product must appear on the product packaging or labeling in both official languages, i.e. English and French, regardless of any trademarks that may also appear on the packaging or label. Complying with this federal legal requirement may not be sufficient if the generic or descriptive term included in the mark is, for example, a quality or characteristic of the product instead of the generic name or function of the product. Further, it is unclear at this stage whether the Charter amendment will require equal or greater visual prominence than how the non-French generic or descriptive term is represented in the mark. Product owners are encouraged to take an inventory of the packaging and labeling of their products to ensure that they comply with both the modified Quebec regime and the current federal regime.

Conclusion

Bill 96 will have a direct and significant impact on how trademarks can be used on product packaging and labeling. This may prompt some trademark holders to consider constitutional challenges to the Act on the basis of the division of federal and provincial jurisdictions, since provisions relating to the use of trademarks may infringe on federal jurisdiction over trademarks. of business. While it remains to be seen how the OQLF will apply these new provisions, it is nevertheless imperative for trademark holders to develop an effective solution adapted to their business objectives in order to remain in compliance. For advice on the impacts of Bill 96 on your business and the use of your trademark, we invite you to seek advice from our Trademarks team.

Footnotes

1.s. 7(4)Regulation on the language of commerce and businessCQLR c C-11, r 9. The Act does not amend the Regulation.

2. Quebec (AG) c 156158 Canada Inc. (Maxie’s Bakery)2015 QCCA 35.

3.s. 51.1Charter of the French languageCQLR c C-11

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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