Canadian Court Sets Test for New Evidence in Trademark Appeals

The Federal Court of Canada has issued its first ruling interpreting amended provisions governing the introduction of new evidence in appeals from Trademark Opposition Board decisions. In Products Unlimited, Inc. v. Five Seasons Comfort Limited, the court developed and applied a test for granting leave to adduce fresh evidence under subsection 56(5) of the Trademarks Act.

The case involved an appeal from a Board decision refusing registration of a mark on functionality grounds. The appellant sought to introduce additional evidence on appeal. The court outlined factors for assessing such requests, including the relevance of the evidence, whether it could have been obtained earlier with due diligence, and the potential impact on the proceedings.

Applying the test, the court admitted the new evidence and overturned the Board’s refusal, finding that the mark was not primarily functional and should proceed to registration. The decision provides guidance on the stricter approach to new evidence in trademark appeals following recent legislative changes.

This ruling clarifies procedural standards in Canadian trademark expungement and opposition matters, affecting how parties prepare and present cases before the Board and on appeal.

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