Co-authored with Marc Mitri
On January 16, 2026, the Federal Court (per McHaffie J) held that the Trademarks Opposition Board (“Board”) erred in refusing registration of Products Unlimited, Inc.’s (“Applicant”) FILTER DESIGN trademark. Of note, this was the first judicial decision to consider the interpretation of subsection 56(5) of the Trademarks Act (effective April 1, 2025) and the proper approach to determining requests to adduce additional evidence on appeal from a Board decision.
Products Unlimited, Inc. v. Five Seasons Comfort Limited 2026 FC 48
Background
The Applicant applied to register the trademark FILTER DESIGN, a trademark consisting of diamond-shaped apertures positioned in slightly offset columns on the surface of industrial and commercial air filters used in paint booths. Five Seasons Comfort Limited (“Respondent”), opposed the application on many grounds, including lack of registrability and distinctiveness.
The Board’s Decision
The Board refused the Applicant’s application to register the trademark because the diamond-shaped apertures in the surface of the air filters were dictated primarily by a utilitarian function. The Applicant appealed to the Federal Court and sought to adduce additional evidence on the appeal.
Issues
Three major issues were raised on appeal:
- Should the Applicant be granted leave to file additional evidence?
- What standard of review should be applied to the Board’s decision?
- Did the Board err in concluding that the FILTER DESIGN trademark is unregistrable because its features are dictated primarily by a utilitarian function?
1. Leave to File Additional Evidence
The Applicant sought leave to file an additional affidavit from a corporate officer under section 56(5) of the Trademarks Act.
Until April 1, 2025, parties to an appeal from a Board decision were allowed to adduce additional evidence without leave. However, as of April 1, 2025, parties are now required to seek leave to file additional evidence. This case, which was filed on April 2, 2025, was the first to be decided under the new leave requirements, so the Court had to determine what principles should guide its approach.
The Court interpreted the new statutory provision in light of its text, object and purpose, the jurisprudence governing the admissibility of new evidence on statutory appeals and judicial review applications, the interests of justice, and the importance of finality, order and efficiency in trademark litigation. Ultimately, the Court held that in deciding whether to grant leave under amended s. 56(5) of the Trademarks Act, the judge must be guided by all of the relevant circumstances, including the following non-exhaustive factors:
- the relevance, credibility, and admissibility of the evidence;
- the materiality of the evidence;
- the circumstances surrounding the delay in filing the evidence; and
- whether granting leave would cause prejudice to the opposing party.
Applying this test, the Court held that leave should be granted because the additional affidavit was: (a) relevant, credible, and admissible; (b) material to the functionality, structure, and design of the filters and the Board’s assessment of particular evidence; (c) responsive to reply evidence that was not elucidated until written argument (no delay); and because (d) no party would suffer prejudice.
2. Standard of Review
The Court held that the existing standard of review on appeals from the Board was not affected by the new leave requirement. The Court must apply a standard of correctness to questions of law and palpable and overriding error to questions of fact or mixed fact and law. If new evidence is admitted, the Court must conduct a de novo review on a correctness standard of issues affected by the new evidence, while unaffected findings are entitled to deference.
3. Registrability of the Trademark
The Court reviewed the record as a whole, including the new evidence, and held that the diamond shape of the apertures and their specific positioning on the filters was not primarily functional. Rather, the functional features of the filters arise only from their internal structure, not the surface pattern of the apertures. As such, the Court held that the Board erred in finding that the shape and arrangement of the apertures was dictated primarily by a utilitarian function.
Conclusion
The Court allowed the appeal, set aside the Board’s decision, and directed the Registrar to register the application for registration of the FILTER DESIGN trademark. The Respondent has 30 days to file an appeal to the Federal Court of Appeal.