Canadian Court Sets Test for New Evidence in TM Appeals

In Products Unlimited, Inc. v. Five Seasons Comfort Limited, the Federal Court of Canada issued its first ruling applying amended subsection 56(5) of the Trademarks Act. The provision, effective April 2025, requires court leave to introduce new evidence on appeals from Board decisions in opposition and expungement matters.

Products Unlimited had sought to register a non-traditional trademark consisting of a diamond-shaped filter design pattern. The Board refused the application after finding insufficient evidence that the mark was not primarily functional. On appeal, the applicant requested leave to file additional affidavit evidence.

The Court developed a multi-factor test centered on whether admission serves the interests of justice. Factors include relevance, credibility, materiality to the outcome, potential prejudice to the other party, and circumstances of any delay in presenting the evidence.

The Court granted leave, noting the amendment signals greater flexibility than traditional appeal standards. It admitted the evidence and overturned the Board's refusal, allowing registration. The opponent did not participate in the appeal.

The decision underscores that parties should now present comprehensive evidence at the Board stage, as future applicants will face stricter scrutiny for supplemental filings.

Sources: https://www.nortonrosefulbright.com/en/knowledge/publications/5b2f7f68/start-strong-federal-court-sets-test-for-new-evidence-on-trademark-expungement https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/529700/index.do