“Please Sir, I Want Some More (Evidence)”: Federal Court Shows Trademark Owner Leniency in Granting Leave to File Additional Evidence, Despite Failure to Provide Evidence on Delay

The Federal Court in PKF Trade Mark Limited v. PKF Chambers Inc., 2026 FC 1072 allowed a trademark owner (the “Applicant”) to file new evidence in an appeal from the Trademarks Opposition Board’s decision to expunge their mark for non-use, despite the Applicant’s failure to provide any evidence explaining why the new evidence was not presented earlier. The Court’s August 19, 2026 decision was based in part on the fact that the Applicant filed its evidence and made submissions to the Opposition Board prior to the current subsection 56(5) of the Trademarks Act coming into force, which removes the ability for parties to file new evidence on appeal as of right.

The Applicant, PKF Trade Mark Limited, is the owner of the “PKF Design” mark registered in association with services such as marketing and business consulting. Pursuant to s. 45 of the Act, the Registrar of Trademarks issued a notice to the Applicant at the request of the Respondent, PKF Chambers Inc., to provide an affidavit or statutory declaration as to whether the mark had been in use in Canada within the prescribed three-year period from the date of registration. While the Applicant did file affidavit evidence, the Opposition Board found that such evidence was hearsay or in respect of examples occurring after the three-year period, and accordingly expunged the mark. The current decision thus stems from the Applicant’s motion seeking leave to file new affidavit evidence from the director of the Applicant’s licensee, setting out that the mark had been used by the licensee in association with relevant services during the prescribed period.

The Respondent conceded the new evidence was relevant, credible, admissible, and material. However, the affidavit did not address why the new evidence had not been presented previously, with the Applicant instead relying on submissions from counsel that the Applicant should be granted leniency in the transition to the current s. 56(5) of the Act, relying on Products Unlimited, 2026 FC 48 and Constellation Brands, 2026 FC 866. In response, the Respondent submitted that the Applicant’s failure to provide evidence respecting delay should be determinative of the motion, and that it would suffer prejudice in the form of increased expense and delay in obtaining approval of its own trademark applications.

Ultimately, although acknowledging that the Applicant’s failure to provide evidence on the point of delay shielded the Applicant from the Respondent’s ability to cross-examine the Applicant on the issue, the Court declined to find the factor of delay to be determinative of whether the Applicant should be granted leave. The Court acknowledged that given the timing of the current s. 56(5) statute coming into effect, the “interests of justice continue to favour some latitude.”

The Court then weighed the factors of the new evidence’s relevance and materiality against the prejudice alleged by the Respondent. In determining that it was in the interest of justice to grant leave, the Court explained that delay and litigation costs are inherent in the scheme under the Act and litigation generally, and could be compensated via costs. The Court subsequently granted the Applicant’s motion, but declined to award it any costs given that the Applicant was “largely responsible for the incurrence of the costs” of the motion.