French Language Charter draft regulations provides more clarity but questions remain

The proposed changes effectively establishes three distinct regimes for trademarks: one for outdoor signage, another for product packaging and labelling, and yet another for commercial publications, which encompasses websites and social media. It also ostensibly clarifies the requirement to translate generic terms and descriptions of products included in a non-generic French trademark, provides limited relief for holder of trademarks that may not yet be registered in Canada, and eliminates exceptions for common law trademarks. The draft regulation provides as well guidelines for complying with a new requirement under the French Charter that replaces the longstanding threshold of sufficient presence of French requirement for public signs and posters displaying a registered trademark visible from outside premises with the more burdensome “markedly predominant” requirement, affirm legal observers.

“Overall, the draft regulations show promise,” said Melissa Tehrani, leader of the national advertising and product regulatory group at Gowling WLG in Montreal. “While there is still some uncertainty and a need for additional guidance and clarity, it seems that the Quebec government has been receptive to some of the comments received regarding the challenges businesses may encounter in compliance. This was reflected in the draft regulations.”

Émile Catimel-Marchand, a Montreal lawyer with McMillan LLP specializing in financial services, shares a similar view, believing that the draft regulation “accommodates certain practical realities that were not taken into account in Bill 96,” Quebec’s French language law.

But Alexandre Fallon, a Montreal litigator with Osler, Hoskin & Harcourt LLP who advises clients on regulatory and statutory compliance, including the French Charter, asserts that while the draft regulation provides more clarity it has more arduous requirements that will make implementation more challenging. “Unfortunately, there’s nothing really positive in these draft regulations,” said Fallon.

That’s a viewpoint shared by another Quebec lawyer who described the regulations as unnecessarily complex. “I’m extremely disappointed, especially since a lot of time was spent explaining to them the issues and concerns of the business world, manufacturers and those in the field of intellectual property,” said the lawyer who wished to remain anonymous for fear that the law firm will pay the price for speaking frankly. “And they come back with a set of regulations that unfortunately lacks clarity in many respects.”

The draft proposal is so technical that lawyers are still trying to understand and examine its provisions, and its new applications, remarked Caroline Jonnaert, a Montreal lawyer and a member of the emerging technologies group at ROBIC. “It’s keeping us busy trying to unravel the potential new regulations so a lot of us are racking our brains trying to give our customers the best possible advice,” said Jonnaert.

Bill 96 was intended to give more bite to the French Charter, but it also left many unanswered questions, particularly for trademark owners who were uncertain over how comply with the amendments by the June 2025 deadline. That is in part remedied, according to legal experts.

TIGHTER REGULATIONS

But to their surprise it also now includes tighter restrictions that went under the radar that may make business think twice before doing business in Quebec. Under s. 51 of the French Charter, every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French. The draft regulation now stipulates that the inscription displayed for the user using an integrated or embedded software too is covered by the requirement. In essence, this would apply to so-called intelligent devices like home appliances.

That is an “interesting” development, according Catimel-Marchand, because traditionally software was exempt from such requirements. “That’s going to have a definite impact because, obviously, if you sell a handful of smart products a year in Quebec with an interface that exists only in English, that’s going to be a big change for those companies,” said Catimel-Marchand. “It’s going to come down to whether people want to sell in Quebec, I think, under these conditions.”

Another stipulation under the draft regulations may give manufacturers pause. At present under the current Regulation respecting the language of commerce and business, an inscription on a product may be exclusively in a language other than French if the product is from outside Quebec and the inscription is engraved, baked or inlaid in the product itself, riveted or welded to it or embossed on it, in a permanent manner. Inscriptions, however, concerning safety must be written in French and appear on the product or accompany it in a permanent manner. That exception has been broadened by the draft regulation, pointed out Christian Bolduc, a Montreal lawyer and registered trade mark agent at Smart & Biggar in Montreal. The proposed draft will require inscriptions to be written in French if it is “necessary for the use of the product.”

“This change, which was never announced before except with this amendment, is major,” said Bolduc. “It will complicate the lives of product manufacturers enormously if it ever comes into force. In many cases, it will have absolutely major repercussions in terms of cost and production time, because it’s not like changing a label on a sticker on a product. This potentially means changing product moulds. That’s a major issue, and it’s going to cost millions and millions of dollars for companies to comply, and companies won’t be able to comply by 1 June 2025.”

Tehrani concurs. She contends that this change is poised to have a “profound impact,” especially for certain categories of product manufacturers, including those in the appliance and electronics industry, where information vital to the use of the product is often engraved in or embossed onto the product in English only for a global market.

This draft requirement is also unclear, and needs more clarity, as it “can be quite subjective” to ascertain what is “necessary” for the use of the product, said Jonnaert. “It’s an eyebrow-raising extension and rather peculiar, especially because everything needed to use a product is usually confined to user manuals, and all this documentation is already subject to French language rules,” said Jonnaert. “This can be problematic for certain industries.”

SIGNAGE

The draft regulation is also going to create headaches for business over signage. Bill 96 introduced s. 58.1 to the French Charter for public signs and posters visible from outside “premises” displaying a non-French registered trademark, which in turn advanced the notion of the “markedly predominant” requirement where the text in French must have a much greater visual impact than the text in another language. The draft regulation provides guidelines for complying with this new requirement, and it stipulates that the registered trademark must be accompanied by terms in French that are at least twice as large as the registered trademark, and offer equivalent legibility and visibility.

“They’re proposing to abolish the existing regulation on the meaning of net predominance which had more flexibility for businesses on signage, and they’re replacing it with a much cruder and less flexible test,” said Fallon. “Now we’re going to have very, very large French slogans and very, very small English trademarks. That’s unfortunate from a visual perspective but from a brand perspective for corporations as well.”

TRADEMARKS

But the draft regulations also brought a sigh of relief to trademark holders. Under s. 51 of the French Charter all inscriptions on a product, its container, wrapping or related documents or objects must be written in French. There are several exceptions to this rule, one of which deals with “registered” trademarks, within the meaning of the Trademarks Act, which may appear in whole or in part in a language other than French on a product. There is an addendum however. If a registered trademark that is exempt from translation appearing on a product includes a non-French “generic term of a description of the product,” the generic term or description will have to appear in French elsewhere on the product.

The draft regulation clarifies the new prerequisites on several fronts. It makes plain that the term “product” includes its container, wrapping and any document or object supplied with it. It also defines a “registered trademark” to include a pending application, and it will be allowed to appear exclusively in a language other than French as long as no corresponding French version has been registered.

“The expanded reach of the ‘registered’ trademark exception, which will also capture pending registration applications at the Canadian Intellectual Property Office, is certainly a positive development,” said Tehrani. “This addresses a significant concern among businesses and brand owners, particularly considering the current lead times for trademark registration in Canada.”

But the extension of the “registered” trademark exemption does not include commercial application, including social media and websites, note legal pundits. Nor has the exemption been broadened to include public signs and posters displaying a registered trademark visible from outside premises. The draft regulation has in essence established three distinct regimes for trademarks, a development that legal observers hope will be remedied.

“It would make it easier to understand and apply the French Charter if these exceptions were harmonized,” said Jonnaert. “The problem is that it’s difficult to make all these changes, to ensure consistency in both the Charter and the draft regulations, because the requirements are ultimately very technical. The challenge is considerable because we are incorporating concepts of trademark law into the French Charter, and trademark law is quite a complex system with many nuances. It’s very difficult to incorporate all that into the Charter and the regulations.”

Legal experts also hope the government will provide more clarity over an attempt by the draft regulation to define the parameters of “generic term or a description of the product.” Deemed by legal observers to be ambiguous at best, the draft regulation defines “description” as one or more words describing a product’s “characteristics” while a “generic term” refers to one or more words describing the “nature of a product.” “These definitions are essentially circular,” said Bolduc. It also gives little indication over how the Office québécois de la langue française (OQLF), the provincial body responsible for enforcing the French Charter and its regulations, will interpret those terms in practice, added Bolduc.

On top of that, the draft regulation stipulates that the French terms translated must be at least equivalent to the non-French terms translated and must be presented on the product as favourably as the non-French terms. “Except that what is registered as a trademark is the label,” noted Bolduc. “If I add language to the label, I am modifying the trademark in use with respect to the way it is registered and potentially jeopardize the trademark registration.”

Lawyers are hoping that the Quebec government will take advantage of the 45-day consultation period, which began on January 10, to make a “very complicated regime” easier to understand so that business can effectively comply with the new language requirements.