Canada's Federal Court continues to show leniency to TM registrants filing new evidence on appeal amid transition to leave requirement

We have been following the Canadian Federal Court’s evolving approach to the new leave requirement under s.56 of the Trademarks Act, which was introduced in April 2025.  

In the most recent case, PKF Trade Mark Limited v. PKF Chambers Inc., 2026 FC 1072 [PKF], the Applicant appealed a decision of the Trademarks Opposition Board (the TMOB) expunging its trademark registration for non-use of the mark under section 45 of the Trademarks Act (the “Act”). In doing so, the Applicant brought a motion seeking leave from the Federal Court to file new evidence on appeal but argued that since they filed their initial evidence with the TMOB prior to the amendment to s. 56(5) of the Act requiring leave to file new evidence on appeal (rather than as of right), they should be afforded the grace to do so.  

This is not a new argument, and the Applicant referenced a prior Federal Court decision, Products Unlimited, Inc. v. Five Seasons Comfort Limited, 2026 FC 48 [Products Unlimited], which adopted a flexible approach to the admission of new evidence in an appeal of a TMOB decision, particularly during the transition to the new approach.  

Specifically, in Products Unlimited, the Federal Court found that the applicant did not file its new evidence earlier with the TMOB since, under the old s. 56(5) of the Act, new evidence could be filed on appeal as of right, but also since the new evidence was intended to respond to reply evidence from the other side that was not elucidated until the written argument stage of the opposition proceeding. In other words, while the applicant could have filed a request for leave to the TMOB at that stage, at the time, s. 56(5) of the Act allowed such evidence to be filed on appeal as of right. For further details on the Products Unlimited case, a link to our previous article on that decision can be found here. 

In contrast, in the PKF case, the Applicant did not file any evidence to explain why the evidence sought to be filed on appeal was not filed with the TMOB at first instance, which was one of the factors established in Products Unlimited of the test for leave. However, despite the lack of evidence to justify the Applicant’s delay, the Federal Court ultimately found that the relevance and materiality of the new evidence outweighed the factor considering why the evidence was note filed earlier, particularly since the underlying purpose of a non-use cancellation proceeding under section 45 of the Act is to remove marks from the Register “that have truly fallen into disuse”. 

Notably, in declining to draw an adverse inference from the Applicant’s failure to explain its delay, the Federal Court not only acknowledged that the Applicant filed its initial evidence with the TMOB before the new s. 56(5) of the Act came into force, but also that it did so before the Products Unlimited decision established the test for leave. While the Federal Court remarked that “the failure to provide an explanation for the delay in producing new evidence will take on increasing importance in future cases” (presumably when the transitional period for the new s. 56(5) of the Act has passed), it appears that applicants who filed their initial evidence with the TMOB before the Products Unlimited decision was issued on January 14, 2026, may still be afforded leniency in their requests for leave to file new evidence on appeal, particularly in section 45 proceedings. 

A link to the Federal Court’s full decision can be found here.