As reported yesterday, the Québec Minister of Culture and Communications and Minister Responsible for the Protection and Promotion of the French Language, Hélène David, announced that the Québec government would be publishing its proposed amendments to the French language regulations today, May 4, 2016, in an effort to ensure the visibility of the French language throughout the province.
The Draft Regulations ("Regulations") will affect all companies with an establishment in Québec who display a non-French trademark in the absence of a French generic term, slogan or description outside their premises. Roof-top signs; storefront signage; signage located inside a building, a mall or a shopping center, whether underground or aboveground; signs or posters inside a building intended to be seen from outside; and signs appearing on a terminal or other independent structure will all be subject to the Regulations, except for certain exceptions. Retailers, hotels, restaurants, bars, financial institutions, boutiques, shopping malls, professional firms, health clubs and all other buildings carrying on a commercial activity appear to be subject to the new Regulations.
The Regulations provide that where a non-French trademark is displayed outside a building, a "sufficient presence of French" must also be ensured, in accordance with the Regulations. The presence of the French language can be ensured by one of three ways:
- A French generic term or description of the products and/or services concerned;
- A French slogan; or
- Any other term or indication, although preference should be given to the display of information pertaining to the products and/or services to the benefit of consumers or persons frequenting the site.
The Regulations further require the French generic terms, slogan or other description to be permanently visible and shown in the same visual field as that of the sign or poster bearing the non-French trademark.
By way of example, the Regulations provide that the French sign will be considered to be compliant vis-à-vis the English trademark where it is designed, illuminated and situated so as to be easily legible, together and at all times when the non-French trademark is legible – without both signs or posters necessarily being present within the same space, in equal numbers, of the same materials or of the same size/dimension. As such, it appears that the concept of a "markedly predominant" presence of French will not be required.
Whether or not the French sign will meet the "legibility" requirement will be assessed based on the type of sign or poster. For trademarks posted outside a building situated on a street, the legibility of the French sign will be evaluated from the sidewalk along the façade on which the trademark appears. For trademarks visible from a highway, the legibility of the French sign will be assessed from the highway. The addition of French business hours, telephone numbers or addresses, or a French sign that requires the viewer to be within a less than 1-meter radius of the sign to be legible, will not meet the "sufficient presence of French" requirement.
A few notable exceptions to these new rules include non-French trademarks appearing on temporary or seasonal stands or kiosks, totem-type structures on which more than two (2) trademarks appear, and totem-type and other independent structures where the non-French trademark also appears on a sign outside a building but in close proximity to it.
Companies with existing signs and posters will be given a 3-year grace period within which to make the necessary changes to their outdoor signage.
The Minister indicated during her press conference of May 3, 2016, that the proposed amendments are the result of consultations, including consultations with businesses operating in Québec. However, the Regulations may still be subject to amendments as a 45-day public consultation period is underway, during which the public may submit written comments to the Minister. Once a final version of the Regulations is published, it should come into force 15 days following its publication.
While the government has assured that the proposed regulations will only have a "moderate" impact on Québec companies and that the various avenues for compliance will "preserve the integrity of trademarks," the addition of a French generic or descriptive term or slogan may constitute an alteration to a registered trademark. Consideration should be given as to whether such additions require further trademark protection. Your trademark counsel may provide further guidance on the recommended next steps. We note that certain retailers who have integrated a French generic or descriptive term to their non-French trademark have already filed applications for registration of their "new" trademark.