New legislation in the province of Quebec now requires businesses to add a French translation or descriptor to the signage of their trademark if it exists in English or any language other than French.
The law went into effect on November 24, 2016, and understandably, many companies didn’t exactly rush to comply. Nearly a year later there is still uncertainty around the details of the law and possible exemptions to it.
“Brand owners are reluctant to translate their trademark because the translated version is simply not their trademark, and on top of that you’re not guaranteed that your English trademark, once translated, won’t infringe on an existing trademark,” said Stephanie Vaccari, partner in our IP Group and head of our Toronto office’s Luxury and Fashion Group.
Stephanie says that the implications of the new legislation go further than just words on a sign or potential infringement issues, though.
“Brands have a particular look and feel which can also be protected from an IP perspective,” she said. “Some brands are very minimalist, so if you clutter it with additional language or descriptors it could affect their trademark’s presentation and feel.”
The new regulations require the inclusion of a “sufficient presence of French” in one of the following forms:
• A generic term or description of the business’s products or services in French;
• A slogan in French;
• Any other term or indication in French favouring the display of information pertaining to the business’s products or services.
“The French signage doesn’t have to be exactly the same as the English but it has to be as prominent,” Stephanie said. “And if the English signage is lit up at night, the French has to be as well.”
The law does not apply to the following:
• Opening hours, phone numbers and postal and electronic addresses;
• Numbers and percentages;
• Definite, indefinite and partitive articles;
• A term that is only readable within a distance of 1 meter except if it is also the case for the trademark.
“In terms of exemptions, there are still no clear examples yet so we’re working to determine exactly what falls within an exemption and what doesn’t,” Stephanie said. “For example, if the trademark can be considered a ‘coined’ term, per say, then you may not have to translate or put a descriptor.”
If a client doesn’t qualify for an exemption, the next step is to ensure that they use the shortest and most generic language possible to comply with the law so that it minimizes the risk of trademark infringement while also insuring the least amount of clutter on their trademark.
Companies with existing signage have until November 24, 2019 to comply while any new signage or replacement signage must be compliant immediately. Penalties could range from $1,500 to $20,000, and while that may not seem very steep for a well known international company, there are other issues at play as well.
“In addition to monetary penalties there could be public relations repercussions,” Stephanie said. “For example, the French language authorities could scrutinize their products to see if they are compliant in their labelling efforts; Quebec consumers may not be inclined to shop in their stores; or they could receive negative press that may cross over and be picked up in other provinces.”
Any company that chooses to simply pay the fine and carry on without complying will be fined double the amount for subsequent offences.
The change in legislation came after the Office Quebecois de la Langue Francaise (OQLF) wanting several large retailers to add French language to their signage. The retailers refused and in 2014 the Quebec Superior court ultimately ruled in their favour. Now, however, companies may be forced to play by the new rules while others may decide it’s no longer in their best interest to do business in the province.
“A number of our international fashion clients are telling me that Quebec is one of the more advanced markets in Canada in respect to fashion,” Stephanie said. “Consumers know their brands and what they sell, so they’re saying, ‘We don’t have to do this anywhere else in the world. We don’t even have to do it in France so why do we have to do it in Quebec?’ But the government is trying to, understandably, protect the French language so we’re working with our clients to balance both sides and achieve the best possible outcome for their brands.”