By David Bowden

The Federal Court has issued an update to its Case and Trial Management Guidelines for Complex Proceedings, Proceedings under the PM(NOC) Regulations, and Appeals under subsection 56(1) of the Trademarks Act, effective July 18, 2025 (the “Guidelines”). The update addresses new rules applicable to appeals made from decisions of the Trademarks Opposition Board (“TMOB”) under section 56(1) of the Trademarks Act.

In particular, the Guidelines create new requirements for parties seeking judicial review of a TMOB decision, and set out the process for seeking leave to file additional evidence under subsection 56(5) of the Trademarks Act. Amendments to this subsection came into force on April 1, 2025, and require applicants to seek leave prior to adducing additional evidence on appeal. Previously, applicants could file additional evidence as of right—so these amendments constitute a significant change to trademark appeal practice.

The Guidelines direct that all appeals from decisions of the TMOB must be accompanied by a letter that (a) identifies that the application relates to a proceeding under subsection 56(1) of the Trademarks Act, and (b) indicates whether the applicant will be seeking leave to adduce additional evidence. If an applicant intends to seek leave to adduce additional evidence, they must request the appointment of a Case Management Judge.

Ten (10) days after the appointment of a Case Management Judge, the parties must jointly request a case management conference to schedule the steps of the proceeding (including the timing and manner for determination of the leave request).

The Guidelines do not specify a default or preferred timing for the determination of leave requests. For instance, the Guidelines do not require that such a decision be issued prior to the Court’s decision on the merits of the application. However, the Guidelines do specify that the decision will be made by the judge who hears the application (and therefore will not, for instance, be decided by way of an interlocutory order from the Case Management Judge).

As of the date of this article, the Federal Court has issued no reported decisions which consider the circumstances in which the Federal Court will grant leave for additional evidence in appeals from the TMOB. In general, existing case law in other types of proceedings typically restricts the judicial review of administrative decisions to the record that was before the administrative decision-makers, although there is an unclosed list of recognized exceptions to this general rule. For instance, additional evidence may be admissible where the new affidavits:

1. provide general background in circumstances where that information might assist in understanding the issues relevant to the judicial review;
2. bring the reviewing Court’s attention to procedural defects that cannot be found in the evidentiary record; and
3. highlight the complete absence of evidence before the administrative decision-maker when it made a particular finding.[1]

However, the newly-in-force subsection 56(5) of the Trademarks Act contemplates the admission of new evidence—albeit subject to the requirement to obtain leave. The Federal Court has left open the possibility that the test for admission of new evidence which applies to an appeal may apply in a judicial review in certain circumstances,[2] and the Federal Court of Appeal has suggested that provisions in applicable legislation which contemplate the submission of additional evidence on judicial review could be one such circumstance.[3] In such circumstances, the Court’s test for admission of additional evidence is a bit more forgiving:

1. the evidence should generally not be admitted if, by due diligence, it could have been adduced at first instance;
2. the evidence must be relevant in the sense that it bears upon a decisive or potentially decisive issue;
3. the evidence must be credible in the sense that it is reasonably capable of belief; and
4. it must be such that, if believe, the evidence could reasonably be expected to have affected the result.[4]

Further, the Court’s approach to granting leave may also be affected by the existing case law regarding the standard of review applicable to appeals of TMOB decisions. In such an appeal, the Court follows the general appellate standard of review, in which findings of law are reviewed on a correctness standard, and findings of fact (and mixed fact and law) are reviewed on a reasonableness standard—unless new evidence filed on appeal would have materially affected the TMOB’s decision, in which case the Court can review the decision de novo (i.e., on a correctness standard).[5]

In other words, the Trademarks Act provides for a unique type of judicial review which both contemplates the admission of fresh evidence on appeal, follows the appellate standard of review, and permits the Court to depart from the appellant standard of review where fresh evidence is material. It is therefore possible that the Court will develop a bespoke approach for determining the admissibility of new evidence in appeals from the TMOB.

Given the relative uncertainty surrounding a party’s ability to adduce new evidence on appeal, it is more important than ever to adduce quality and comprehensive evidence in proceedings before the TMOB, and to challenge evidence filed by other parties through cross-examination (in circumstances where that procedure is available). While the Court will likely provide guidance in future decisions, currently the most prudent approach is to put your best foot forward, and to establish the best possible evidentiary record at first instance.

[1] Assn. of Universities & Colleges of Canada v. Canadian Copyright Licensing Agency, 2012 FCA 22 at para. 20).

[2] Svanidze v Canada, 2025 FC 1230 at para. 14.

[3] Mackie v Teamsters Canada Rail Conference, 2022 FCA 186 (“Teamsters”) at para. 7.

[4] Palmer v The Queen, [1980] 1 SCR 759 at para. 22; cited in Teamsters at para. 6.

[5] The Clorox Company of Canada, Ltd v Chloretec SEC, 2020 FCA 76 at paras. 20—23; see also subsection 56(5) of the Trademarks Act, which provides that “the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar.”