Trademark Oppositions involving Trade Secrets

Stichting BDO has opposed Israel Trademark Application Numbers  222941, 222937, 222936 and 220381 to BANCO DE ORO UNIBANK INC.

In a joint approach to the Israel Patent Authority, the parties requested that the proceeding and decision be restricted since it includes trade secrets.

Background

This is a rather interesting development. To prove usage of a mark a party often submits evidence of sales, market share and other information that may legitimately be considered as being proprietary business information, or a trade secret. On the other hand, judicial proceedings should be open to public scrutiny. Justice should be seen to be done. This is why the Israel Patent Authority and the Israel courts routinely publish decisions that summarize the evidence brought and the decision made. Publishing decisions creates precedents.

Sometimes, to protect minors or rape victims, or for reasons of national security, hearings are held behind closed doors and a censored decision providing the legal analysis but with sensitive information withheld is published.

Section 23D of the Commercial Torts Law 1999 (חוק עוולות מסחריות) and section 68B(8) of the Combined Israel Courts Law 1984 allow for proprietary information to be kept confidential in trademark hearings. The Commissioner or whoever hears the case has to decide if the information is indeed a trade secret worthy of protection, or if the general considerations that require decisions to be published take precedence.

On reviewing the arguments presented, the Israel Commissioner of Patents and Trademarks, Assa Kling has determined that restricting access to sensitive information is reasonable in this case, and has made provision for access to sensitive evidence to be restricted. He has, however, requested that both sides limit restricting evidence in this manner, to that which legitimately can be considered a trade secret.

Ruling from 24 January 2012.

COMMENTS

Obviously, I can’t relate substantively to this judicial ruling since I don’t know what the trade secrets are, or whether I could find them by googling.

It does seem however, that it is correct to facilitate the submission of evidence to be considered by a judge or commissioner without it automatically becoming public knowledge. A ruling can certainly detail legal principles used and generalize the results, such as stating that one side presented compelling evidence that their usage of the mark was significant and exceeded the use of the other side. Presumably if appealed, the file with the evidence would be transferred to the courts.

 

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