The Canadian Trademarks Act has undergone a significant change, effective April 1, 2025. Subsection 56(5) now requires parties to seek court approval before submitting additional evidence during appeals of Registrar decisions, including those from the Trademarks Opposition Board (TMOB). Unlike previous rules, the amendment does not specify clear criteria for granting such leave, leaving courts to interpret the standard.
This ambiguity was recently addressed in Products Unlimited, Inc v Five Seasons Comfort Limited, 2026 FC 48, where the Federal Court provided the first substantive guidance on the revised subsection. The decision underscores the importance of balancing procedural fairness with the need for efficient judicial processes.
How Leave Is Determined
Justice McHaffie emphasized that leave to file additional evidence is not automatic but also not exceptionally rare. The court will evaluate requests using a flexible approach, focusing on the interests of justice. Key factors include:
- Relevance and credibility of the evidence
- Materiality of the evidence to the case
- Circumstances of any delay in submission
- Potential prejudice to the opposing party
In the case, the court granted leave to the applicant because the evidence addressed material issues that became clear only during the written argument phase. This highlights the importance of presenting all relevant information early, even if its significance is not immediately apparent.
Timing and Procedural Steps
While the court clarified that the leave analysis is separate from the merits of the appeal, it outlined procedural steps for appeals. Under updated guidelines effective July 18, 2025, appellants must:
- Include a letter in their appeal indicating whether they seek leave under subsection 56(5)
- Request a Case Management Judge to address procedural matters, including timing and method of leave determination
- Leave itself is decided by the applications judge
The court stressed that timing will vary depending on the specifics of each case, requiring parties to navigate the process carefully.
Standard of Review
The decision reaffirms that the amendments to subsection 56(5) do not alter the established framework for reviewing appeals. Key principles include:
- Questions of law are reviewed for correctness
- Questions of fact and mixed fact-law issues are assessed for “palpable and overriding error” unless additional evidence is admitted
- If leave is granted and the evidence is material, the court will conduct a de novo review of findings affected by the new evidence, while applying the “palpable and overriding error” standard to unaffected findings
The court also noted that materiality is typically assessed at the leave stage, making it unlikely that evidence unrelated to the Registrar’s findings will be accepted.
Implications for Businesses
The ruling serves as an essential consideration for businesses to present their strongest case at the initial stage - before the TMOB. Withdrawing evidence for appeal risks being denied leave, as courts prioritize timely and comprehensive submissions.
For trademark owners, this decision underscores the importance of proactive monitoring and strategic evidence management. Confusability assessments and ongoing brand protection must be addressed early to avoid procedural hurdles in later stages.
The evolving landscape of trademark law demands vigilance, clarity, and a deep understanding of procedural rules. As courts refine their approach, businesses must adapt to ensure their cases meet the standards of fairness and efficiency.