Appeals from the Opposition Board

An appeal lies from a decision of the Hearing Officer on behalf of the Registrar to the Federal Court within two months from the date on which notice of decision was sent by the Registrar or such further time as the court may allow, either before or after the expiry of the two months. An appeal is available only with respect to a “final decision”, which effectively disposes of the proceeding, and not from an “interlocutory” decision.

The appeal is made by way of notice of appeal filed with the Registrar and the Federal Court. The notice of appeal must be filed and sent by registered mail to the registered owner of any trademark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.

Filing Additional Evidence

Previously the appeal was not restricted to the record before the Registrar and evidence in addition to that presented before the Registrar could be filed. Additional evidence could be filed even if the applicant did not file evidence before the Register. The Court may exercise any discretion vested in the Registrar. 

Where additional evidence was filed that would have materially affected the Registrar’s findings of fact or the exercise of discretion, the judge hearing the appeal could come to his or her own conclusion as to the correctness of the Registrar’s decision. Generally, the evidence had to be sufficiently substantial and significant. But the more substantial the additional evidence the closer the Court could come to making the finding of fact for itself without having to defer to the Board’s decision. However, even if the new evidence was material its reception did not eliminate the Board’s expertise as a relevant consideration.

The New Requirement to Obtain Leave

Effective April 1, 2025, there is no longer an automatic right to file new evidence and leave is required. The Act states that if, on an appeal the Federal Court grants leave to adduce evidence in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar.

It is not clear how Judges will apply the new requirement to obtain leave, but the writer’s educated guess is the requirement will not be simply a rubber stamp and will probably be similar to the existing requirement that the evidence be material and sufficiently substantial and significant.

This change will compel the parties to an opposition to put their best foot forward at the opposition stage.

If you have questions, please contact me at mckeown@gsnh.com.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.