TMOB Appeals And New Evidence: Practical Guidance After Products Unlimited

Overview

Significant amendments to the Trademarks Act and Trademarks Regulations came into force on April 1, 2025.¹ These amendments implemented the Government of Canada’s 2018 Intellectual Property Strategy and were designed to increase efficiency in trademark disputes, prevent abusive practices, and underscore the importance of “use”, as defined under the Trademarks Act, as the basis for maintaining and asserting trademark rights in Canada.

An amendment of particular interest is the change to s. 56(5) of the Trademarks Act, which governs a party’s ability to introduce new evidence on the appeal of a decision of the Trademarks Opposition Board (the “TMOB”). Previously, parties had the right to introduce new evidence on appeal. Under the amended provision, a party must now obtain leave of the Court before any new evidence will be admitted.

The standard for obtaining leave to admit such new evidence on appeal was initially an open question as s. 56(5) does not expressly set out any test or standard.

Now, more guidance is available. On January 14, 2026, Justice McHaffie released his decision in Products Unlimited, Inc. v. Five Seasons Comfort Limited, 2026 FC 48 (“Products Unlimited”), in which he substantively addressed the new approach to granting leave to adduce additional evidence. This approach was recently endorsed and applied by Justice Furlanetto in Trademark Building Products Inc. v. Window World International, LLC, 2026 FC 251.

Background on the Case

Products Unlimited appealed an opposition decision of the TMOB refusing its application to register the trademark FILTER DESIGN. The FILTER DESIGN trademark is a non-traditional trademark that consists of the positioning of a sign in the form of a pattern of diamond-shaped apertures on the surface of certain air filters. The TMOB refused the application on the basis that the diamond-shaped apertures were dictated primarily by a utilitarian function and were therefore unregistrable under s. 12(2) of the Trademarks Act.

On appeal to the Federal Court, Products Unlimited sought leave to file additional evidence and asked the Court to overturn the TMOB’s decision. It argued that the additional evidence established that the positioning of the diamond-shaped apertures on the surface of the filters was not dictated primarily by a utilitarian function.

Justice McHaffie granted leave to file the additional evidence on appeal. He also found that the evidence demonstrated that the features of the FILTER DESIGN trademark were not dictated primarily by a utilitarian function. Justice McHaffie allowed the appeal and directed the Registrar to register the trademark.

The Test for Advancing New Evidence on Appeal

In determining the appropriate approach to be taken when considering leave requests made under s. 56(5), Justice McHaffie was guided by principles of statutory interpretation and by the test for adducing new evidence on appeal established by the Supreme Court of Canada in Palmer v. The Queen, [1980] 1 SCR 759.

The Palmer test considers four factors: (1) whether the evidence could have been adduced at trial through due diligence, (2) whether the evidence is relevant, (3) whether the evidence is credible, and (4) whether the evidence could have affected the result at trial.

Section 56(5) of the Trademarks Act, as amended, provides as follows:

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.

Justice McHaffie interpreted the amendments as creating a broader approach to new evidence than typically applies in appellate proceedings. Notably, the provision does not include limiting language such as “in special circumstances” and preserves the Court’s authority to exercise any discretion vested in the Registrar.

Justice McHaffie also considered the Explanatory Note accompanying the Order in Council that brought the amended s. 56(5) into force. The Explanatory Note states:

[The provisions] also remove the guaranteed ability to file additional evidence on appeal to the Federal Court from any decision of the Registrar, a change that is also balanced with the introduction of the ability for parties to obtain a confidentiality order from the Registrar when they file commercially sensitive or personal information in evidence before the Board. With the availability of confidentiality orders, parties may be less inclined to withhold relevant evidence which includes sensitive or economically valuable information, which will prevent “dual litigation” that is both inefficient and potentially abusive, particularly to small or medium-sized enterprises (SMEs).²

Justice McHaffie accepted and endorsed the purpose of the amendments as addressing the historical unavailability of confidentiality orders in TMOB proceedings (the effect being that any evidence filed in TMOB proceedings was publicly accessible), which had discouraged parties from filing relevant, but commercially sensitive, evidence before the TMOB. He also recognized that the former right to file evidence on appeal had contributed to inefficiencies by encouraging the re-litigation of trademark issues.

Based on his statutory interpretation of the amendments to s. 56(5), Justice McHaffie concluded that Parliament intended a more flexible approach to the leave requirement than a strict application of the Palmer test.

Under this newly endorsed approach, the Federal Court will consider whether the interests of justice favour granting leave based on 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
• whether granting leave would cause prejudice to the opposing party.

Key Takeaways

Justice McHaffie’s decision in Products Unlimited provides helpful guidance to trademark litigants. In practice, parties should take a more strategic approach to presenting their strongest evidence before the TMOB, particularly in light of the new availability of confidentiality orders, and should be prepared to explain why additional evidence that it requests be admitted on appeal was not filed in the first instance before the TMOB.

The next open question for which we are awaiting direction concerns the timing and procedure for an application judge’s decision to grant leave to file new evidence. Recent Federal Court guidelines require that all appeals from TMOB decisions under section 56(1) of the Trademarks Act be accompanied by a letter to the Registry indicating whether the appellant intends to seek leave to adduce new evidence under section 56(5). The guidelines note that all requests for leave to adduce new evidence will be determined by the applications judge. However, the guidelines do not address the timing or procedural requirements for that determination. That remains a question for another day.

Footnotes

1 Order Fixing April 1, 2025 as the Day on Which Certain Provisions of the Budget Implementation Act, 2018, No. 2 Come into Force, SI/2025-12, (2025) C Gaz II, 887 (Budget Implementation Act, 2018, No. 2) (Order in Council); Regulations Amending the Trademarks Regulations, SOR/2025-19, s. 9.

2 Order Fixing April 1, 2025 as the Day on Which Certain Provisions of the Budget Implementation Act, 2018, No. 2 Come into Force, SI/2025-12, (2025) C Gaz II, 887 (Budget Implementation Act, 2018, No. 2) (Order in Council) p. 890.

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