As of April 1, 2025, subsection 56(5) of the Trademarks Act requires parties to obtain leave to file additional evidence on appeal from decisions of the Registrar of Trademarks (the “Registrar”), which include decisions of the Trademarks Opposition Board (the “TMOB”). The amended subsection, however, does not set out any express criteria for obtaining leave.
In Products Unlimited, Inc v Five Seasons Comfort Limited, 2026 FC 48, a recent appeal from a decision of the TMOB, the Federal Court issued its first substantive guidance on the amended subsection 56(5).
Test for leave under subsection 56(5)
In the decision, Justice McHaffie held that leave should be assessed through a flexible approach directed at the interests of justice. In doing so, the Court will consider all relevant circumstances, including:
- the relevance, credibility, and admissibility of the evidence;
- the materiality of the evidence;
- the circumstances surrounding the delay in filing the evidence; and
- any prejudice to the opposing party.
Applying these principles, the Court granted leave to the applicant to file its additional evidence, notably because the applicant would have had the right to file additional evidence under the former subsection 56(5), and the applicant’s evidence responded primarily to reply evidence, the significance of which became clear only at the written argument stage of the opposition proceeding.
Timing and procedure
While the Court emphasized that the leave analysis is distinct from the merits of the appeal, it provided limited guidance on when leave must be sought or determined.
Nevertheless, the Court noted that under its newly amended practice notice, New Case and Trial Management Guidelines for Complex Proceedings, Proceedings under the PM(NOC) Regulations, and Appeals under Subsection 56(1) of the Trademarks Act (effective July 18, 2025), an appeal must be accompanied by a letter indicating whether the appellant is seeking leave under subsection 56(5). Where leave is sought, the appellant must request the appointment of a Case Management Judge to address procedural issues, including the timing and manner of the determination of the request for leave. The determination of leave itself remains with the applications judge.
As a result, timing will likely be addressed on a case-by-case basis.
Standard of review
The decision also confirms that the amendments to subsection 56(5) do not fundamentally alter the standard-of-review framework previously articulated by the Federal Court of Appeal.
Justice McHaffie summarized the applicable approach as follows:
- Questions of law remain subject to the correctness standard.
- Questions of fact and mixed fact and law are reviewed for “palpable and overriding error” where no additional evidence is admitted.
- Where leave is granted, and the additional evidence is material, the Court will conduct a de novo review (correctness) of findings affected by that evidence, while applying the standard of “palpable and overriding error” to findings unaffected by the additional evidence.
The Court also noted that materiality will generally be assessed at the leave stage, making it unlikely that leave would be granted for evidence that does not affect the Registrar’s findings.
Practical takeaways
This decision clarifies how the Federal Court will approach subsection 56(5), and confirms that while leave to file additional evidence is no longer automatic, it is also not exceptional. The decision serves as a timely reminder that parties are expected to put their “best foot forward” at first instance, before the TMOB, rather than holding back evidence for appeal.