Category Archives: Intellectual Property

Québec Adopts its Charter of the French Language v. 3.0

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The province of Québec recently sought to modernize its Charter of the French Language (the “Charter“), a piece of legislation many Quebecers still call “Bill 101” to this day. After partially amending this statute in 2019, the Québec government overhauled it earlier this month, by adopting Bill 96. Through this bill, Québec is expanding the obligations imposed on organizations and businesses, to use French whenever (and however) interacting with residents of the province.

Though I don’t want to get into all the details this morning, it seems worthwhile to provide you with an overview of the kinds of changes this new version of the Charter brings us, so here it is so as to provide you with an idea of what we’re now facing:

  • A general obligation that all organizations serve their clients in French, by providing them with any and all documents and documentation in French, as the case may be;
  • A major change of the rule as to the display of non-French trademarks, by doing away with the exception relating to the common law trademarks. From now on, only common law trademarks composed solely of French words will be tolerated under the Charter, while the rest of trademarks used in Québec will have to be actually registered to pass muster;
  • Reinforcement of the provisions relating to public display of trademarks (e.g. signage) by now requiring that the overall appearance provide substantially more space to French, as compared to other languages such as English (i.e. store fronts should show about twice as much content in French than other languages, not taking into account the trademark);
  • Introduction of a new rule stating that adhesion contracts must now be available in French as a condition of validity for the contracts that are actually entered into by Quebecers, I including but not limited to those for consumers;
  • Lowering from 50 employees to 25, the threshold above which organizations must adopt and apply a francization program;
  • Adoption of stricter rules as to job postings in French and when an organization may require that job applicants have language skills unrelated to French;
  • Addition of a new rule that all written documents and documentation provided by employers to their employees systematically be in French.

It also seems worthwhile to mention that Bill 96 also adds a very American twist to the Charter, by introducing a private right of action. Once in force, this will allow individuals to sue businesses that violate the Charter, so as to obtain either injunctions or (and yes, this is what’s going to have business owners pay attention) damages and punitive damages. As if often the case whenever such rights are introduced in a piece of legislation, class actions will be the first type of proceedings we can expect them to be used for.

I should mention, finally, that most changes outlined above will not come into effect for 3 years, so as to provide businesses with a transition period during which they can bring their organizations in line with the new rules. So, June 1st, 2025 is the deadline you should remember, to update all your practices and your way of doing things in Québec. Mark your calendars!

So, is your organization in-line with all this? Probably not. If it is not, then you now have less than 3 years to do your homework!

Time to Get Out the Garbage: Trademark Office Publishes Draft Practice Notice on Cancelling Bogus Official Marks

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Canada’s trademark regime is peculiar in more way than one, including because of the existence of a peculiar type of mark called an “Official mark”. This type of registration is a kind of super mark that CIPO may grant to public authorities, a legal concept that has evolved over time, including to curb the use of this type of mark by organizations , and even business, that do not qualify.

To make a long story short, though “public authorities” aren’t necessarily governmental entities per se, jurisprudence confirmed they must somehow qualify as such, by virtue of being controlled (controllable) by the government and having activities that benefit members of the public. Though the Trademarks Office (the “TMO”) now checks against this definition when issue public marks, it did not always do so and, as a result, our trademark is cluttered with these super marks, quite a few of which are legally invalid.

The problem is made worse by the fact the TMA does not provide a time limit for public marks, so that once granted they remain on the register indefinitely, in principle.

A new section the Trademarks Act (the “TMA”) now seeks to provide some relied as to this issue, by providing us with a section akin to Section 45 through which we may get rid of deadwood on the register, and which allows easily challenging dubious official marks. In essence, the TMA now provides that anyone may challenge a bogus official mark, by flagging it for the TMO, which may then strike it from the register if it was indeed obtain without right by the entity at issue.

Recently, CIPO published a draft practice notice that sets out how submitting such a request to cancel an official mark registration will work in practice. The procedure set forth in the practice notice would require the person objecting to a registered official mark to notify the TMO, pay fees, and provide some sort of evidence that the entity holding the official mark isn’t actually a governmental (or government-related) entity. If, after inquiring, it appears the mark is indeed anomalous, then the TMO may cancel it outright.

So, we’re finally getting a way to scrap bogus official marks that have been cluttering the register for years and years. Not a moment too soon if you ask me, especially given how broad the protection afforded by the TMA to official mark is, by protecting them automatically in any and all classes of products and services, in effect!

After 3 Years of the New Trademarks Act, Registrants Should Beware of Use Requirement More Than Ever

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As you may remember, in June 2019, Canada enacted a whole new version of the Trademarks Act (the “TMA”) and which did away with lots of the requirements that applicants previously has to contend with. Case in point: since then, applicants wishing to register their marks in Canada no longer have to show (or even claim) they actually used their marks, merely that they want to register them.

Unsurprisingly, this lead to more than a few organizations and businesses filing applications for marks that may not have been registrable prior to 2019, back when the Trademarks Office (the “TMO”) was concerned with confirming owners actually has used their marks in Canada. As a result, the Canadian register is now filling up with more marks, part of which do not relate to trademarks that are actually being used in association with the actual products and services listed in the application. Welcome to Canadian trademark law in 2022!

Fortunately for us, one thing the TMA still does contain (about use) is a provision granting anyone the right to question whether any given registered mark was actually used in Canada, as defined by the TMA. In essence, “expungement” proceedings, described in Section 45 of the TMA, provide that anyone who pays the applicable governmental fees may trigger an inquiry by the TMO about whether the owner of the registration at issue can demonstrate it in fact used the mark in Canada, during the previous 3 years, in association with the types of products and services listed in the registration at issue. Failing to do so, the TMO can expunge (strike) the registration from the Canadien register. Now that the new TMA has been in force for 3 years, those who wish to get rid of certain recent registrations (i.e. the applications of which were filed around 2019) may start doing so in the upcoming months and years. Consequently, it seems more than likely we’ll be seeing an uptick of the number of expungement proceedings in Canada. After all, given how cheap this is, compared to actual court proceedings, it remains one of the best tool at our disposal when confronted with a trademark registration we may want to get rid of.

Though Canada’s registration system did away with lots of formalities meant to confirm applicants actually used their marks, the use requirement is alive and well in Canada. Whatever the TMA may say, the legal basis for the existence of trademarks (registered or not) does remain “use”, in Canada. As such, though a registration is useful, it’s important to understand that our jurisdiction is not like others where registration is what creates rights in a trademark. Though one may obtain a Canadian registration without use, keeping it may be trickier. Registrants beware!