On April 1, 2025, several amendments to Canada’s Trademarks Act (the “Act”) came into force after a six-year wait. Many of these amendments have significantly impacted practice before the Trademark Opposition Board (the “Board”). Perhaps most notable is the new requirement to secure leave to file fresh evidence in any appeal to the Federal Court from a Board decision under section 56 of the Act.

Historically, parties to a proceeding before the Board were entitled to file fresh evidence on appeal as of right. Often, this resulted in parties treating Board proceedings as a trial run, taking comfort in knowing they would have a second kick at the can if a decision did not swing their way. However, as a result of the coming into force of these amendments, new evidence may now only be introduced on appeal if leave is granted by the Federal Court.

As we approach the one-year anniversary of this new requirement, we now have some guidance from the court respecting the legal test when seeking leave to file new evidence on appeal.

The Framework

Products Unlimited, Inc. v Five Seasons Comfort Limited (2026 FC 48) (the “Decision”) involved an appeal of the Board’s decision to refuse an application to register a filter design as a trademark in Canada for paint booth air filters following a successful opposition on the grounds that the features of the design were dictated primarily by a utilitarian function and the design was therefore unregistrable as a trademark. The appeal was launched on April 2, 2025, the day after the new leave requirement took effect.

At paragraph 30 of the Decision, the court set out a framework for determining whether to grant leave to file fresh evidence on appeal in a given case. In sum, the following factors must be considered in every request for leave under the amended section 56(5):

Relevance, credibility, and admissibility: New evidence that is not relevant to the decision being appealed, is not reasonably capable of belief, or that would ordinarily be inadmissible under applicable rules of evidence, should not be admitted. Admission of such evidence would accomplish little.

Materiality: New evidence is material if it is sufficiently substantial and significant that it could have materially affected the Registrar’s findings. Notably, the materiality of the evidence sought to be introduced has always been a factor for consideration in determining the applicable standard of review. Now, it will also bear directly on whether leave ought to be granted to submit fresh evidence on appeal.

Circumstances surrounding the delay: The circumstances surrounding the delay in filing the evidence sought to be introduced on appeal, including more than the mere inability to produce the evidence by the exercise of due diligence of the party requesting leave. How lenient the Federal Court is willing to be in considering this factor remains to be seen, though it was noted that a more flexible approach is required than in seeking leave to file new evidence per Rule 351 of the Federal Court Rules.

Prejudice to the opposing party: This factor was taken directly from the framework for the admission of further evidence in applications under Rule 312 of the Federal Court Rules. Rule 312 jurisprudence dealing with the issue of prejudice to the parties should therefore be consulted.

It is worth noting that in the Products Unlimited case, the decision appealed from was issued in respect of a matter that was before the Board when parties were not required to seek leave to file new evidence on appeal. The court expressly noted that this may be a relevant factor. However, we expect it will be relevant only to matters in which evidence was filed with the Board before February 26, 2025, when the profession was notified that the amended section 56(5) would soon take effect. It will be entirely irrelevant for any Board proceeding initiated after April 1, 2025, when the new requirement took effect.

Application of the Framework

Unfortunately, the opponent, who had been successful in its opposition before the Board, elected not to participate in the appeal in the Products Unlimited case. The Attorney General for Canada did not participate either. As a result, the court’s analysis of certain factors may be regarded as superficial.

For instance, consideration of prejudice to the opposing party was limited to noting that there was no indication that granting leave would cause any prejudice to the opponent. This is not surprising given that the opponent elected not to participate and therefore made no submissions on this point. Similarly, the court summarily concluded that there was no question as to the relevance, admissibility, or materiality of the evidence. Nor was there any question as to its credibility, given that the witness was not cross-examined.

The unusual circumstances surrounding the opponent’s reply evidence were also critical to the court’s decision. The evidence consisted of little more than screenshots of various webpages, attached as exhibits to an affidavit, and their relevance did not become apparent until the written representations were submitted. At that point, the applicant would have required the Board's leave to file additional evidence to respond effectively. As the old legislation was still in force at that stage, the applicant had no reason to suspect that it would not be entitled to file that new evidence as of right in an appeal.