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In Products Unlimited, Inc. v. Five Seasons Comfort Limited, the Federal Court provided guidance on recently amended subsection 56(5) of the Trademarks Act and the factors it will consider when deciding whether to grant leave to file additional evidence in appeals of decisions of the Registrar of Trademarks. Notably, the Court indicated that there is potentially greater flexibility in the admission of new evidence in such appeals relative to other appeals.
Current subsection 56(5) came into force on 1 April 2025 and provides:
"If, on an appeal under subsection (1), the Federal Court grants leave to adduce evidence in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar."
In interpreting subsection 56(5), the Court stated that "the specific language of subsection 56(5)... points to a more flexible approach to the leave requirement" compared to the general approach set out in case law applicable to other appeals. The Court continued by noting that granting leave is "ultimately directed at the interests of justice" and all relevant factors should be considered, including:
- the relevance, credibility, and admissibility of the evidence;
- the materiality of the evidence;
- the circumstances surrounding the delay in filing the evidence; and
- whether granting leave would cause prejudice to the opposing party.
Discussing the third factor, the Court noted that the circumstances surrounding the delay in filing the evidence "is important in trademark proceedings, but merits a more flexible application" as "[t]he choice to now require leave to file new evidence indicates Parliament's intent to have the Board decide issues at first instance... [h]owever... the language of the subsection also signals an intention for greater flexibility in the admission of new evidence than is generally afforded in appeals".
The full decision can be found here.
Federal Court Provides Guidance on Filing Additional Evidence in Trademark Appeals
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