Federal Court Clarifies When Leave Is Required To File New Evidence In Trademark Appeals

Recent amendments to section 56(5) of the Trademarks Act now require parties to seek leave before filing new evidence on appeal (the "Amendment").¹ As discussed in our earlier bulletin, Put Your Best Foot Forward: New Evidence Requirements for Trademark Appeals, the Amendment materially changed the evidentiary landscape for trademark appeals. In a recent decision, Big Duck Games, LLC v. X-Flow Ltd.,² the Federal Court clarified the applicability of the Amendment to appeals filed before April 1, 2025, and confirmed the circumstances in which new evidence may still be admitted.

New Regime Requires Leave to File New Evidence on Appeal

Effective April 1, 2025, parties appealing decisions of the Registrar of Trademarks to the Federal Court no longer have an automatic right to file new evidence on appeal. The Amendment requires that parties must first obtain leave from the court to introduce evidence not previously filed before the Registrar.

Big Duck Games, LLC v. X-Flow Ltd.

In Big Duck Games, LLC v. X-Flow Ltd., the Federal Court considered an appeal arising from a section 45 non-use proceeding involving the FLOW trademark (Registration No. TMA924,809) (the "Mark"). In the appeal, new evidence was relied upon to (i) explain the failure to respond to the section 45 notices and (ii) demonstrate use of the Mark during the relevant period.

At the hearing, counsel for Big Duck Games raised the issue of amended subsection 56(5), including whether leave was required to file the new evidence that formed the foundation of the appeal. Although the appeal was commenced before the Amendment came into force, the new evidence itself was filed after April 1, 2025.

The Federal Court concluded that the Amendment did not apply. It held that the right to file new evidence without leave had vested on March 31, 2025 (one day before the Amendment took effect), when a judge granted an extension of time to file the Notice of Application. The Court reasoned that, under the Federal Courts Rules, an application may be considered "commenced" even before the actual filing of supporting evidence.

The court further found Big Duck Games' new evidence sufficiently substantial, significant, and probative to have materially affected the Registrar's decision, and ultimately restored the registration. In particular, the evidence explained that the registrant had not been aware of the section 45 notice due to a postal code error, a change of address, and the retirement of the Canadian trademark agent who filed the original application for the Mark. The evidence also demonstrated continuous use of the Mark throughout the relevant period.

Had the extension been granted just one day later, Big Duck Games would have been required to seek leave to file the very evidence that ultimately reversed the Registrar's decision.

Best Practices Going Forward

Not everyone will be as lucky as Big Duck Games. As a reminder, we highlight below best practices in light of both the Decision and the Amendment.

• Keep your Applicant and Agent details up to date and accurate: Correspondence from the Canadian Intellectual Property Office will be sent to the addresses on file. If the details are not accurate, companies may miss important correspondence, including challenges to their registered trademarks.
• Keep an organized record of use of trademark: The Amendment creates a strategic landscape where parties should be ready to submit all of their evidence at the earliest opportunity. Maintaining detailed and organized records with respect to trademark use will help companies and their registered trademark agents act quickly to prepare and file evidence.
• Assume no second chance: Filing new evidence on appeal will likely become more difficult and less frequent. Companies and counsel should take proceedings before the Registrar seriously, and put their best foot forward from the beginning.

Conclusion

Navigating Canada's reformed trademark regime requires strategic planning and meticulous preparation. Our intellectual property team has deep expertise in building robust evidentiary records before the Registrar and can help you effectively protect your trademark portfolio.

Footnotes

1 RSC 1985, c T-13.

2 2025 FC 1704.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2025