Publications

Packed with valuable information, our publications help you stay in touch with the latest developments in the fields of law affecting you, whatever your sector of activity. Our professionals are committed to keeping you informed of breaking legal news through their analysis of recent judgments, amendments, laws, and regulations.

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  • New regulations for the owners of non-French trade-marks

    On November 24th, 2016, the Quebec government has adopted new regulations regarding the public display of non-French trade-marks in Quebec. The new regulations may be summarized as follows: trade-marks do not have to be translated into French but French language must be sufficiently present in all signs on the exterior of buildings. Here are several important points worth remembering: Scope of the new regulations: the new regulations only apply to signs on the exterior of buildings, and they are not aimed at product labels or packaging, nor are they aimed at websites or social media.   Signs on the exterior of buildings include: signs on roofs, as well as on bollards and other structures independent from buildings; signs placed outside premises, kiosks or counters located inside buildings; signs placed inside buildings or premises if they are intended to be seen from outside. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> Sufficient presence of French: The presence of French language will be deemed sufficient if the sign includes a French generic term or descriptor of the products or services; a French slogan or any other term providing information related to the products or services, provided that such French terms are: permanently visible as the trade-mark being displayed; and legible in the same visual field as that of the trade-mark.   The presence of French shall be deemed satisfactory if the French terms are designed, lighted, and situated so that they can be easily read at the same time as the trade-mark. This does not necessarily require that the French terms be present in the same place, in the same number, in the same materials or in the same size as the trade-mark. In order to assess the legibility of the French terms, the legislator has gone so far as to provide distinct points of reference namely: from the sidewalk, for the exterior of buildings; from the middle of a corridor, for a premises in a building; and from a highway, for trade-marks visible therefrom.   The legibility of a French term will be considered insufficient if it is necessary to be within one meter of a display to read it, unless the legibility of the mark also requires such proximity. Deadline to comply with the new regulations: Since November 24, 2016, any new signs on the exterior of buildings (or any replacement signs) must respect the new regulations. Owners of signs mounted before November 24, 2016 benefit from a transitional period until November 24, 2019 to comply with the new regulations.   Please do not hesitate to contact the members of our team for any questions concerning the Charter of the French Language and its regulations.

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  • Trade-marks in Quebec and the Charter of the French Language: the end of a debate, and the start of another?

    As previously announced in our newsletter on April 14, 2016, the Quebec government published draft regulations that would put an end to the debate regarding the public display of trade-marks in Quebec. The Quebec government has finally abandoned the idea of requiring a French descriptor when displaying non-French trade-marks. However, the aforementioned draft provides new rules regarding the display of trade-marks, and with new rules comes the risk of new debates. The obligation to have “sufficient French presence” According to the draft regulations, companies displaying trade-marks in a language other than French must ensure “sufficient French presence” on the exterior of buildings. The “French presence” will need to be reflected by the display of any of the following: a French generic term or descriptor of the wares or services in question; a French slogan; or any other French term or indicator, although preference should be given to the display of information concerning the wares and/or services to the benefit of people who frequent the premises.   Such a display will be deemed “sufficient” if it accomplishes both of the following: gives the French language in question permanent visibility, similar to the trade-mark being displayed; and ensures readability in the same field of view as that of the trade-mark being displayed.   The draft regulations provide certain parameters for assessing the visibility and readability of the French language being displayed. The Quebec government’s official website offers some explanations and illustrations to aid in the understanding of the new rules. http://www.mcc.gouv.qc.ca/index.php?id=5835http://www.mcc.gouv.qc.ca/index.php?id=5836 Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> Who will be affected by the new regulations? Any company that displays non-French trade-marks on the exterior of a building will be subject to the new regulations. Companies already established in Quebec at the time the regulations come into force will have three years to make necessary adjustments to their existing signage. However, new companies will have to comply with said rules from the moment they commence. When will the new regulations come into force? The draft regulations are currently the subject of a public consultation which will end in early June. It remains to be seen whether there will be changes to the draft, as well as what date the new regulations will come into force. We are closely monitoring developments in this matter and will keep you informed thereof. For any questions regarding the application of the Charter of the French Language in Quebec, please do not hesitate to contact members of our team.

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  • Trade-marks in Quebec and the Charter of the French Language: the end of a debate?

    According to information presently available, it appears that the Quebec government will forgo implementing legislative amendments that would have forced companies conducting business in Quebec to add a French descriptor to signs displaying their non-French trade-marks. Instead, after some reflection and consultation, the government has apparently opted for regulations which will oblige companies to use French language on their facades. We will have to wait for draft regulations to know the full scope of these new obligations. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> This decision will hopefully put an end to the debate on the necessity of adding a French descriptor to non-French trade-marks. We are closely monitoring developments in this matter and will keep you informed once the draft regulations are published. For any questions regarding the application of the Charter of the French Language in Quebec, please do not hesitate to contact members of our team.

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  • Nice Classification: A first step in Canada’s upcoming trademark reform

    It is now possible to adopt the Nice classification for trademark applications in Canada. This new measure, which is currently voluntary but will become mandatory once the new provisions of the Trade-Marks Act come into force, allows a trademark owner to classify goods and services among the 45 classes of the Nice Agreement. This is the first step towards a number of changes to harmonize the Canadian system with various international treaties. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> For now, the government filing fee is still $250, regardless of the number of classes covered by the application. It remains to be seen whether the fees will be increased or not. Most of the member countries of the Nice Agreement charge a fee per class of goods and services. Which system will Canada adopt and what will be the cost? These and other details will be found in the new regulations which are expected in fall 2016, according to the latest news from CIPO. Stay tuned!

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  • The Charter of the French Language reviewed by the Court of Québec

    The Court of Québec has recently examined the application of the Charter of the French Language (the “Charter”) in the case of Boulangerie Maxie’s 1. This decision provides clarification as to what constitutes a “markedly predominant” use of the French language in advertising and public signs. The Court also confirmed that a trade-mark in a language other than French benefits from an exception whether registered or not. In addition, the Court ruled on the de minimis defence which may, in certain cases, be applicable when the alleged violations are minimal. The “markedly predominant” use of French Some defendants argued that the use of the French version before the English version (on a same sign), was sufficient to conclude that French was used in a “markedly predominant” manner. The Court rejected this argument and found that such a use does not meet the criteria of marked predominance. In short, the visual impact of the French version must be more important, and in this respect, the Court recalls the 2-for-1 rule provided for in the regulation which constitutes one of the ways to attain this objective:    the space allotted to the text in French must be at least twice as large as the space allotted to the text in another language; the characters used in the French version must be at least twice as large as those used in the other language; Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> The trade-marks exception Some defendants argued that they did not have to translate expressions such as “Everything inside packed with pride” and “Italian fancy leather goods” used in their advertising because these expressions fall under the “trade-marks” exception. The regulations indeed provide that “recognized” trade-marks within the meaning of the Trade-marks Act do not need to be translated into French (unless a French version has been registered). The Court found that the trade-marks exception applies not only to registered trade-marks, but also to unregistered trade-marks, provided that the expression qualifies as a “trade-mark”. In this respect, the Court was of the opinion that the “Italian fancy leather goods” was purely descriptive and did not constitute a trade-mark. This expression must therefore appear in French only or in French and in another language, provided that the French version is markedly predominant. The Court found however that “Everything inside packed with pride” qualified as a trade-mark and did not need to be translated into the French language on public signs and in advertising. This conclusion does not constitute new law. In fact, the courts have already in the past decided that an unregistered trade-mark constitutes a “recognized” trade-mark with the meaning of the Act. The Office de la Langue Française has however not amended its practice to conform to these decisions. It will therefore be interesting to see whether the Office de la Langue Française will follow the Court’s conclusions.   The de minimis defence To avoid liability, the defendants raised several defences. Apart from the arguments challenging the constitutionality of the Charter, which were rejected, the defendants pleaded that the alleged offences were minimal and did not justify legal action. This defence was rejected. According to the Court, the following facts do not qualify as minor offences justifying the application of the de minimisdefence: posting a bilingual version of same size when the Charter provides that the French version must be markedly predominant providing product packaging in English only internet website in English language, without a French translation The Court stresses however that the following facts may possibly justify a de minimis defence: a sign on which a couple of millimeters are missing to decide that the French version is markedly predominant a catalogue of hundreds of pages with equivalent French and English versions, except for a missing word or phrase bilingual packaging or instruction manuals where a word or two in French are missing   In conclusion, the Charter and its regulations establish different rules concerning the use of a language other than French (see the table below). Note that several exceptions are applicable depending for example on the nature of the products and the activities, the origin or the destination of the products. Should you have any questions, please contact a member of our firm. Quebec (Attorney General) v. 156158 Canada Inc. (Boulangerie Maxie’s), 2015 QCCQ 354

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  • Future changes to Canada’s Trade-Marks Act

    Significant modifications to the Canadian trade-mark system are expected in the near future. According to the Canadian Intellectual Property Office (“CIPO”), the amendments should come into force at the end of 2015 or early 2016. Said changes arise from the negotiation of a free trade agreement between Canada and Europe (Comprehensive Economic and Trade Agreement) during which Canada agreed to adopt three international treaties (Madrid Protocol, Nice Agreement and Singapore Treaty). As a result, the registration process will be simplified and the Canadian system will, to a certain extent, be harmonized with the European system and many other foreign countries. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> The most significant changes are: abolition of the filing basis: the only filing requirement will be an intent to use the mark in Canada; abolition of the declaration of use:  no declaration of use will have to be filed to obtain a registration; Nice classification: goods and services will have to be classified according to the Nice classification. It remains to be seen whether CIPO will require only one fee per application (as the current situation) or require a fee per class or group of classes. Another outstanding issue is whether CIPO will remain as demanding in terms of details for the description of goods and services; term: registration will be valid for 10 years instead of 15 years; divisional application: under the new law, it will be possible to divide the application into divisional applications; international application: Canada will be part of the Madrid system, thus allowing Canadians to extend their rights in the member states via an international application and allowing foreigners to file directly in Canada. Despite the abolition of the filing basis and the requirement to file a declaration of use, it will still be possible to file an opposition or challenge third parties’ rights on the basis of prior use in Canada. Indeed, Canada will remain a country where rights arise from use. Before implementing these provisions which have been sanctioned in Bill C-31 last June, new trade-mark regulations must be adopted. In this respect, CIPO is now conducting pre-consultations concerning amendments to the current regulations until November 30th, 2014. CIPO will also have to update its IT systems before the coming into force of the new provisions. In light of these changes, it is expected that the number of filings will increase in Canada since (1) mere intention to use the mark will be sufficient to obtain a registration and (2) the international filing system will allow foreigners to file directly in Canada. As a consequence, it is more than ever recommended to be proactive and to file applications to protect trade-mark rights in order to avoid opposition proceedings and litigation.

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