Provision For Adducing New Evidence In Trademarks Appeals Interpreted For The First Time By Federal Court

On January 14, 2026, the Federal Court (the Court) issued its decision in Products Unlimited, Inc. v Five Seasons Comfort Limited, 2026 FC 48, overturning the Trademark Opposition Board’s decision (the Board’s Decision) which refused Products Unlimited, Inc.’s (the Applicant) application for FILTER DESIGN on the ground that the diamond-shaped aperture design is dictated primarily by a utilitarian function and therefore non-registrable. The Applicant sought leave to file additional evidence and appealed the Board’s Decision.

The Court interpreted subsection 56(5) of the Trademarks Act for the first time since its enactment on April 1, 2025 in deciding whether to grant leave to adduce additional evidence. The Court held that the best approach to interpreting the provision should consider whether the interests of justice favour granting leave on the basis of the following factors:

1. The relevance, credibility, and admissibility of the evidence;
2. The materiality of the evidence;
3. The circumstances surrounding the delay in filing the evidence; and
4. Prejudice to the opposing party.

Based on these factors, the Court granted the Applicant leave to file further evidence. The Applicant adduced an affidavit from its Vice President on the functionality, structure, and design of its filters. The Court held that this evidence went to the central issue of utilitarian functionality and could have materially affected the underlying decision. Although the evidence did not arise after the Board’s Decision, the Court found that granting leave was justified because: (i) the Applicant still had the right to file additional evidence on appeal at the time of the Board’s Decision; and (ii) the affidavit primarily responded to the Opponent’s reply evidence. There was no indication of potential prejudice as the Opponent did not participate in the appeal.

With new evidence in hand, the Court held that the structure and composition of the filter’s interior provided the functionality, rather than the diamond-shaped apertures or their positioning. Therefore, the diamond-shaped aperture design mark was registrable as it was not dictated primarily by a utilitarian function.

The Court set aside the Board’s Decision and directed the Registrar to register the Applicant’s mark as no other ground of opposition remained.

Summary By: Amy Ariganello