Background
PKF Trade Mark Limited owned registration No. TMA983573 for the PKF Design trademark, licensed to PKF Antares Professional Corporation. Following a request by PKF Chambers Inc., the Registrar issued a notice under section 45 of the Trademarks Act requiring proof that the mark had been used between November 16, 2020, and November 16, 2023.
The Trademarks Opposition Board expunged the registration after finding that the evidence did not demonstrate use during the relevant period. On appeal, PKF Trade Mark sought leave under subsection 56(5) to file an affidavit from a director of its licensee stating that the licensee had provided accounting and related services under the mark in Canada and had issued more than 1,885 branded invoices during the relevant period. PKF Chambers conceded for purposes of the motion that the proposed evidence was relevant, credible, admissible and material, but opposed admission because PKF Trade Mark had not explained its delay and because admission would allegedly cause prejudice.
The Court’s Holding
The Federal Court granted leave to file the affidavit. Applying the interests-of-justice test, the Court held that the evidence’s relevance and materiality outweighed the absence of evidence explaining why it had not been presented earlier. Although counsel’s arguments could not substitute for evidence explaining the delay, the Court afforded some latitude because the Board proceedings occurred before the amended subsection 56(5) took effect and before the new leave test was established.
The Court rejected the claimed prejudice as a reason to deny leave. Delay was inherent in the statutory scheme and litigation generally, while litigation expenses could be addressed through costs. The material evidence also advanced section 45’s underlying purpose of removing marks that have truly fallen into disuse. The Court did not decide the merits of the appeal or whether the new affidavit ultimately established use of the mark.
The motion was granted without costs. Despite succeeding, PKF Trade Mark was largely responsible for the motion’s costs, while PKF Chambers had narrowed the dispute through its concession concerning the evidence.
Key Takeaways
- Leave to introduce new evidence under subsection 56(5) depends on the interests of justice, assessed by weighing relevance, credibility, admissibility, materiality, delay and prejudice.
- An unexplained delay may weigh against admission and may become increasingly important in future cases, but it was not determinative during the transition from the former evidentiary regime.
- Ordinary litigation delay and compensable legal expenses will not necessarily establish prejudice sufficient to exclude material evidence.
Why It Matters
The decision illustrates the Federal Court’s transitional approach to the amended subsection 56(5), which gives the Court a stricter gatekeeping role over new evidence in trademark appeals. Parties should not assume that similarly unexplained evidence will be admitted in later cases.
For trademark owners responding to section 45 notices, the case also underscores the importance of presenting direct, timely proof of Canadian use—such as invoices showing services performed under the mark—before the Board rather than relying on an appeal to repair the record.