It has been more than a year since an amendment to the Trademarks Act came into force requiring parties to appeals from the Trademarks Opposition Board (the “TMOB”) to obtain leave to file new evidence. The requirement, under section 56(5), has generated a growing body of case law that began with Products Unlimited, Inc v Five Seasons Comfort Limited, 2026 FC 48 (“Products Unlimited”) where the Federal Court first set out the factors to be considered on such a motion.
A bona fide request
In its latest decision, Bonafide Health, LLC v. Bonafide Health & Drugs Limited, 2026 FC 1144 (“Bonafide”), the Court considered an interesting issue that had not yet been raised in this context: can a party obtain leave to cross-examine on an affidavit that was filed in the TMOB proceedings and rely on a transcript of the cross-examination in the appeal before the Federal Court? The short answer is no.
In Bonafide, the Appellant sought leave to cross-examine on an affidavit that the Respondent had filed before the TMOB but that the Appellant had declined to cross-examine on at the time, which was before the leave requirement under section 56(5) had come into force. In a lengthy decision, Justice McHaffie ultimately agreed with the Respondent (represented by Shift Law) that a party to a Federal Court proceeding cannot cross-examine on an affidavit that was filed before another tribunal, in this case before the TMOB.
When an affidavit is “spent”
Central to the Respondent’s argument was the Federal Court of Appeal’s decision in Meredith & Finlayson v Canada (Registrar of Trademarks) (sub nom Berg Equipment Co (Canada) Ltd v Meredith & Finlayson), 1991 CanLII 14352, 40 CPR (3d) 409 (FCA) (“Meredith & Finlayson”). Meredith & Finlayson involved an appeal from a TMOB decision in a Section 45 expungement proceeding where the Federal Court had granted the requesting party leave to cross-examine on the affidavits that the registrant had filed with the TMOB. The Federal Court of Appeal overturned the Federal Court’s decision on the principled basis that “we know of no provision which would allow the court to order cross-examination on affidavits filed in proceedings before another tribunal.”
In Bonafide, Justice McHaffie concluded that this principle applied equally to prevent the Federal Court from ordering cross-examination on an affidavit filed before the TMOB in an opposition proceeding under appeal. In reaching this conclusion, Justice McHaffie considered an unreported decision from the Federal Court confirming that “an affidavit is ‘spent’ once the proceeding in which it was filed has concluded.” The fact that an affidavit filed in the TMOB forms part of the record before the Federal Court on an appeal does not entitle an adverse party to cross-examine on it as if it were being filed for the first time. This means that the Federal Court could not order cross-examination on such an affidavit even if all of the factors from Products Unlimited otherwise favoured granting leave to file a transcript of the cross-examination as new evidence.
The grounds of appeal frame relevance
Having dismissed the Appellant’s request for leave to cross-examine on the Respondent’s TMOB affidavit, Justice McHaffie turned to its request for leave to file two additional affidavits that, according to the Appellant, would have materially affected the TMOB’s decision. Justice McHaffie denied this request as well because information in the additional affidavits was not relevant to the Appellant’s pleaded grounds of appeal which defined the scope of relevance on the appeal. He agreed with the Respondent that, even if the affidavits might have affected the TMOB’s decision, they could not affect the decision of the Federal Court if they did not relate specifically to the Appellant’s pleaded grounds of appeal which they did not.
Why Bonafide matters
By addressing the novel situation described above and how relevance is to be determined with respect to proposed new evidence, the decision in Bonafide is a significant addition to the growing body of case law under the amended section 56(5) of the Trademarks Act. It confirms that parties to an appeal of a TMOB decision cannot cross-examine on affidavits that were filed before the TMOB that they chose not to cross-examine on in that proceeding. It also confirms that the potential relevance of proposed new evidence will be limited by the pleaded grounds of appeal.
How Shift Law can help
Shift Law’s representation of the successful party in Bonafide attests to our expertise in complex matters of trademark law and Federal Court procedure. Please contact us if you are involved in a trademark dispute and require specialized legal assistance.
Frequently asked questions
Below are answers to common questions about new evidence in appeals from Trademarks Opposition Board decisions and the Federal Court’s decision in Bonafide Health, LLC v. Bonafide Health & Drugs Limited.
Can a party cross-examine on an affidavit filed before the Trademarks Opposition Board when appealing to the Federal Court?
No. In Bonafide Health, LLC v. Bonafide Health & Drugs Limited, the Federal Court confirmed that a party to a Federal Court proceeding cannot cross-examine on an affidavit that was filed before another tribunal, in this case the Trademarks Opposition Board. An affidavit is “spent” once the proceeding in which it was filed has concluded.
What did the Federal Court decide in Bonafide Health, LLC v. Bonafide Health & Drugs Limited?
The Federal Court denied the Appellant’s requests to cross-examine on an affidavit filed before the Trademarks Opposition Board and to file additional affidavits as new evidence. The Court confirmed that parties to an appeal of a TMOB decision cannot cross-examine on affidavits filed before the TMOB that they chose not to cross-examine on in that proceeding. It also confirmed that the potential relevance of proposed new evidence will be limited by the pleaded grounds of appeal.
How do the grounds of appeal affect new evidence in an appeal from a Trademarks Opposition Board decision?
The pleaded grounds of appeal define the scope of relevance on the appeal. In Bonafide, the Federal Court found that even if additional affidavits might have affected the TMOB’s decision, they could not affect the Federal Court’s decision if they did not relate specifically to the Appellant’s pleaded grounds of appeal.
