First guidance on leave to adduce additional evidence under subsection 56(5) of the Trademarks Act

The Federal Court of Canada’s (“Court”) decision in Products Unlimited, Inc v. Five Seasons Comfort Limited, 2026 FC 48, represents the first time the Court has addressed the new leave requirement under subsection 56(5) of the Trademarks Act for adducing additional evidence when appealing decisions from Registrar of Trademarks to the Federal Court.

The current section 56(5) of the Trademarks Act came into effect in April 2025. Previously, parties could file additional evidence as of right when appealing decisions of the Registrar to the Federal Court. However, the amendment now requires parties to obtain leave from the Court before they can rely on additional evidence on appeal.

Factors to assess leave

The Trademarks Act itself does not specify any test or requirement for obtaining leave. In its first decision considering the issue, Justice McHaffie of the Federal Court identified four factors for assessing whether to grant leave:[1]

• 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.

In considering the circumstances of the delay in filing the evidence, the Court indicates the parties should explain why the evidence was not or could not have been put before the Opposition Board. For proceedings that were ongoing prior to the amendments of April 2025, the Court further indicates that the framework as it was prior to April 2025 can be considered for the circumstances surrounding the delay.[2]

On this point, among other differences, prior to April 2025, it was not possible to obtain any protective or confidentiality order for proceedings before the Opposition Board, but such orders are available from the Federal Court. To avoid confidential information becoming public, the established practice was to wait until an appeal to the Federal Court before submitting any confidential information, and after a confidentiality order was obtained.[3]

In Products Unlimited, the Court commented on the sequence of evidence in the proceeding before the Opposition Board. The Court was of the view that the additional evidence was not warranted until after the opponent’s submissions were filed in June 2024. The applicant could have sought to adduce additional evidence once it became clear additional evidence may be required following receipt of the opponent’s submissions. But the Court accepted that under the pre-April 2025 framework, it was reasonable for the applicant to not seek to adduce additional evidence at that time, as the framework allowed the applicant to adduce such evidence as of right on appeal if needed. Ultimately, the Court granted leave to the applicant to adduce its additional evidence.

The decision signals that there may be a de facto transition period as parties adapt to the amendments to the Trademarks Act, since in applying the factors laid out by the Federal Court in assessing whether to grant leave, the Court has signalled it is appropriate to consider if the pre-April 2025 framework may have influenced the decision of a party to wait until an appeal to adduce additional evidence.

Impact on standard of review

The Court concluded that the applicable standard of review remains effectively the same after the amendments to the Trademarks Act, subject to one adjustment in approach.

Under the pre-April 2025 framework, where a party adduced additional evidence as of right, the Court would assess the materiality of the additional evidence to determine the applicable standard of review: If the evidence was material, the standard of correctness applied, and the Court considered the issue de novo. If the additional evidence was not material, the standard of correctness would only apply to questions of law, and the standard of palpable and overriding error would apply to other issues.[4]

With parties now required to seek leave to adduce additional evidence, the Court’s proposed factors will consider materiality as part of the leave determination. Consequently, the Court would effectively be determining the applicable standard of review in its assessment of whether to grant leave. In other words, if leave is granted, the standard of review would be correctness, and the Court must consider the matter de novo on matters to which the new adduced evidence relates. If leave is denied, the standard of review would be palpable and overriding error, except for extricable questions of law.

Under the Federal Court’s Case and Trial Management Guidelines for Complex Proceedings, Proceedings under the PM(NOC) Regulations, and Appeals under Subsection 56(1) of the Trademarks Act, dated July 18, 2025, an appellant commencing an appeal to the Federal Court must request the assignment of a Case Management Judge. The Guidelines provide that the issue of leave to adduce additional evidence shall be determined by the application judge. However, leave will not necessarily be determined together with the merits of the appeal.[5]

In this respect, in Products Unlimited, whether leave to adduce new evidence would be granted was decided as part of the hearing on the merits of the appeal. The Court therefore had the applicant’s full submissions on the merits when assessing the materiality of the additional evidence. The appeal to the Federal Court was also not opposed or responded to.

However, in certain appeals currently pending before the Federal Court, the issue of leave to adduce additional evidence appears set to be determined as a standalone motion prior to the hearing on the merits of the appeal. In such cases, the materiality of the additional evidence may therefore need to be determined without the benefit of the parties making their full submissions on the merits.

Key takeaways

Under the factors identified by the Court in Products Unlimited, key changes following the April 2025 amendments include that (i) parties seeking to adduce new evidence on appeal will now have to explain why the evidence was not or could not be adduced before the Opposition Board, and (ii) the materiality of the evidence will be considered in whether to grant leave, effectively raising the issue of standard of review separately from the hearing on the merits of the appeal, which will be of particular interest to parties who are ordered by the Court to present a motion for leave to adduce new evidence on appeal as a standalone motion prior to a hearing on the merits of the appeal.