On July 18, 2025, the Federal Court issued an update to its “Case and Trial Management Guidelines for Complex Proceedings, Proceedings under the Patented Medicines (Notice of Compliance) Regulations (PM(NOC) Regulations), and Appeals under subsection 56(1) of the Trademarks Act” (the Guidelines), effective immediately. The updates particularly relate to appeals of the Registrar of Trademarks under subsection 56(1) of the Trademarks Act (the Act).
The Guidelines introduce requirements for parties seeking judicial review of a decision made by the Trademarks Opposition Board (TMOB) and set out steps for seeking leave to file additional evidence under subsection 56(5) of the Act. Prior to the amendments to subsection 56(5) of the Act requiring leave to appeal (which came into force on April 1, 2025), applicants could file additional evidence on appeal as of right.
The Guidelines state that all appeals of decisions of the Registrar of Trademarks made pursuant to subsection 56(1) must be accompanied by a letter to the Registry which:
- Identifies the proceeding as a proceeding under subsection 56(1) of the Act; and
- Indicates whether the appellant will be seeking leave to adduce additional evidence under subsection 56(5). If the appellant will be seeking leave, the letter must request that the proceeding continue as a specially managed proceeding and request for the appointment of a case management judge pursuant to Rule 383 of the Federal Courts Rules.
The Guidelines state that all requests for leave to adduce new evidence will be heard by the applications judge. Further, within 10 days of the appointment of a case management judge, the parties must jointly request a case management conference to determine a schedule for the steps of the proceeding. This includes the timing and manner for determining the leave request, hearing availability for the application, and the timing of appointment of the applications judge.
Summary By: Victoria Di Felice
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