USA PRO – Can Sales and Marketing Data Submitted To Israel Patent Office Be Considered As Trade Secrets?

USA PRO.pngUSA Pro IP LTD filed Israel Trademark Application Number 268322 for “ISRAEL PRO”.

To prevail against Examiner’s Objections during Office Actions, the Applicant has to provide evidence of use and awareness of the mark amongst the relevant public. Once a mark is allowed, it publishes for Opposition purposes and third parties may challenge statements made during Examination or in evidence submitted. Sometimes, the Applicant does not want this evidence to be available to third parties, and claims that they are trade-secrets that should be kept secret.   This ruling addresses the conflicting rights of the applicant and of third parties that are inherent in keeping evidence and submissions confidential.

Confidential-219x194.jpgThe request to keep the evidence confidential was submitted in accordance with Circular 028/2014 “Trademarks – Examination of the Application Files” from 26 August 2014.

To prove that the mark had acquired distinctiveness, the Applicant submitted a summary of the investment in marketing, invoices for sales in Israel, Britain and the US and world-wide sales data.The Applicant claims that making this information available could adversely affect its ability to deal with third parties that that it was in contentious proceedings with in various jurisdictions.

Section 23 of the Trade Torts Law 1999 defines the Commissioner’s authority to rule that trade secrets of an applicant or another will not be published. This rule covers all courts and bodies having judicial or quasi-legal authority in accordance with any and all laws. Section 5 of the Trade Torts Law 1999 defines trade secrets as:

“Business information of any type that is not in the public domain and cannot be easily and legally revealed by others, whose secrets provide the owner with a business advantage over competitors, so long as the owners have taken reasonable precaution to maintain the information confidential.”

From examination of the documents submitted and the requested confidentiality, it appears that they cover the applicant’s sales in fine detail, including the type of goods sold, prices, who they were sold to and in what quantities. Additionally, the alleged advertising sales budget was provided.

From the request to keep this information secret, it appears that this information is confidential and was not revealed to third parties. In this instance and since there is no a priori public interest in this information that outweighs the applicant’s request to keep this secret, it should remain confidential, at least at present, whilst the mark is under Examination.

access-deniedAs the Deputy Commissioner, Ms Jacqueline Bracha, does not think that revealing this information is required to enable third parties to review trademark applications for the purpose of opposing them, she does not see a need to make this information available to third parties and orders that it remains confidential. To support this position, reference is made to the Israel Trademark No. 243620 “Become ill? Injured?” Center for Receiving Medical Rights LTD decision of 1 December 2014. It is understood that to the extent that an Examiner decides to relate to this material during prosecution, he can do so in general terms, whilst giving enough details to serve the interest of the public following the prosecution. However, should the mark be allowed and an Opposition filed, the Opposer may be entitled to greater or even to full access to the confidential material. Thus in the event of the mark being allowed, an opposition filed and the Opposer requesting access, the issue will be revisited.

The request for confidentiality and this decision are made public.made public.jpg

Decision re confidentiality of trade-secrets revealed to the Israel Patent Office during prosecution of a trademark for USA PRO, ruling by Ms Jacqueline Bracha, 21 August 2016.

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