Put Your Best Foot Forward: New Evidence Requirements for Trademark Appeals

Put Your Best Foot Forward: New Evidence Requirements for Trademark Appeals

A recent change to Canada’s Trademarks Act alters the dynamics of trademark appeals, making it more important than ever for parties to put their best case forward from the outset. Effective April 1, 2025, parties appealing a decision of the Registrar of Trademarks to the Federal Courts will no longer have an automatic right to file new evidence on appeal. Instead, under the amended section 56(5) of the Trademarks Act, they must first obtain leave to introduce evidence not previously filed before the Registrar.[1]

Legislative History

The new leave requirement for filing evidence on appeal is part of broader reforms introduced under Canada’s 2018 Intellectual Property Strategy, which are intended “to strengthen, modernize and enhance the efficiency and effectiveness of Canada’s trademark regime”.[2] The amendments were enacted through Bill C-86, the Budget Implementation Act, 2018, No. 2, which received Royal Assent on December 13, 2018.[3]

While passed in 2018, the amendment to section 56(5) of the Trademarks Act was not immediately brought into force. Implementation was deferred until supporting and regulations and procedures could be developed.[4] Ultimately, on February 5, 2025, an Order in Council was issued fixing April 1, 2025, as the coming-into-force date for the remaining amendments under Bill C-86, including the new section 56(5) leave requirement.[5] The amended regulations also took effect on the same day.[6]

The Prior Regime

Before the amendment, section 56 of the Trademarks Act allowed parties appealing a decision from the Registrar to file new evidence on appeal as of right.[7] New evidence would often result in the Federal Courts reconsidering the matter de novo, giving little or no deference to the Registrar’s conclusions on points affected by the new evidence.[8] For the Court to undertake a de novo review, the new evidence had to be sufficiently substantial, significant and reliable to potentially impact the Registrar’s findings.[9]

This framework incentivized some parties to withhold evidence until the appeal stage. The government’s regulatory impact analysis noted that this tactic was often used to avoid the public disclosure associated with filings before the Trademarks Opposition Board (“TMOB“) where the record is made public. In contrast, evidence submitted to the court on appeal could potentially be sealed.[10]

This dynamic contributed to incomplete evidentiary records before the TMOB and effectively bifurcated the litigation process, leading to inefficiencies and duplicative proceedings. The government referred to this phenomenon as creating “dual litigation,” whereby a full evidentiary contest played out again on appeal, contrary to the goals of efficiency and finality.[11]

Regulatory Consultations and Feedback

The Intellectual Property Institute of Canada (“IPIC“), in its 2018 Submission to the Senate Standing Committee on Banking, Trade and Commerce, supported the purpose of the amendments requiring leave to file new evidence and allowing for confidentiality orders: namely, to discourage case-splitting and encourage parties to build a complete evidentiary record before the Registrar.[12]

Proposed changes to the Trademarks Regulations underwent three rounds of consultations led by the Canadian Intellectual Property Office (“CIPO“) between 2022 and 2023.[13] The preliminary consultation, held on April 11, 2022, marked the first opportunity to introduce the proposed changes to the trademark profession and agent community.[14] A second round of consultations followed in May and June 2022.

These consultations targeted IP associations and members of the IP bar, focusing on gathering detailed feedback on specific changes aimed at improving service delivery.[15] Later in the year, CIPO launched a third, broader consultation. Running from November 21, 2022, to February 3, 2023, this 75-day consultation sought input and feedback from the trademark profession, both domestic and international stakeholders, and members of the public who had an interest in Canada’s trademark regime.[16]

Overall, the feedback received was largely supportive and has helped shape the final version of the proposed amendments to the Regulations.[17]

Balancing Efficiency, Fairness and Administrative Law Principles

The 2025 amendments to the Trademarks Act introduced procedural and substantive changes to strengthen the trademark appeal process.

To address concerns about public disclosure of sensitive information at first instance, the amendments introduced a mechanism for seeking confidentiality orders before the TMOB. Together, the new confidentiality mechanism and the requirement to obtain leave to file additional evidence on appeal aim to promote procedural efficiency while preserving fairness. The goal is to ensure that the evidentiary record is as complete as possible before the Registrar, minimizing duplicative proceedings and encouraging parties to fully advance their case from the outset.

The amendments also bring trademark appeals further in line with administrative law principles, as clarified by the Supreme Court’s decision in Canada (Minister of Citizenship and Immigration) v. Vavilov. In Vavilov, the Court confirmed that statutory appeals from administrative decision-makers are generally subject to appellate standards of review, with correctness applying to legal questions and palpable and overriding error to factual findings.[18]

In the trademark context, the Federal Court of Appeal has since held that where no new evidence is adduced on appeal, the Federal Courts must conduct an appellate review of the Registrar’s decision, rather than substituting its own view of the facts.[19] The 2025 amendment reinforces this appellate framework, reserving de novo review only for cases where the Federal Courts grant leave to admit new and material evidence. As under the prior regime, the materiality of new evidence, including its reliability, remains a key consideration in determining whether de novo review is warranted.

Looking Ahead

The new leave requirement under section 56(5) of the Trademarks Act introduces a significant procedural shift for trademark appeals. Previously, parties had an automatic right to file new evidence on appeal, with the Federal Courts’ approach depending on the materiality of that evidence. Now, parties must seek permission to introduce new evidence, a change expected to encourage the submission of comprehensive evidence during initial proceedings before the Registrar. We can next expect the Federal Courts to focus on the specific criteria for granting leave. We expect that the materiality of the proposed evidence, including its reliability and probative value, will continue to be key considerations. We also expect the Federal Courts to consider the earlier availability of evidence and justification for the delay in bringing it forward. The court may also develop these considerations and package them under an “exceptional circumstances”-style criteria with other leave requirements.

[1] Budget Implementation Act, 2018, No. 2, S.C. 2018, c 27, s 226; Canada Gazette, Part II, Volume 159, Number 5: Order Fixing April 1, 2025 as the Day on Which Certain Provisions of the Budget Implementation Act, 2018, No. 2 Come into Force (February 26, 2025) at page 889.
[2] Canada Gazette, Part II, Volume 159, Number 5 (February 26, 2025) at page 887.
[3] Canada Gazette, Part III, Volume 41, Number 2, page 161.
[4] Canada Gazette, Part I, Volume 158, Number 23: Regulations Amending the Trademarks Regulations (June 8, 2024).
[5] SI/2025-0012.
[6] Canada Gazette, Part II, Volume 159, Number 5 (February 26, 2025) at page 763.
[7] Trademarks Act, R.S.C. 1985, c T-13, s 56(5).
[8] The Clorox Company of Canada, Ltd. v. Chloretec S.E.C., 2020 FCA 76 at para. 21 [Chloretec]; See also our firm’s previous bulletin for additional context: “Clorox v Chloretec: The Application of Vavilov in the Trademarks Context”.
[9] Obsidian Group Inc. v. Canada (Attorney General), 2020 FC 586 at para 27.
[10] Canada Gazette, Part II, Volume 159, Number 5: Regulations Amending the Trademarks Regulations: SOR/2025-19 (February 26, 2025).
[11] Canada Gazette, Part II, Volume 159, Number 5 (February 26, 2025) at page 890.
[12] Intellectual Property Institute of Canada (IPIC), “Recommendations on Possible Amendments to Bill C-86, Subdivisions A, B, C, E & H,” Submission to the Senate Standing Committee on Banking, Trade and Commerce, (27 November 2018) at page 19.
[13] Canada Gazette, Part II, Volume 159, Number 5 (February 26, 2025) at page 772.
[14] Ibid.
[15] Ibid.
[16] Ibid.
[17] Ibid.
[18] Canada (Minister of Citizenship and Immigration) v. Vavilov, 2019 SCC 65 at para. 37.
[19] Chloretec at paras. 22-23.

by Adam Chisholm, Paola Ramirez, Yu Meng Fang (Articling Student)

A Cautionary Note

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.

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