L’Oreal filed Israel trademark application no. 261691 for CARMILANE in class 3 covering cosmetics for hair care, namely shampoos, gels, foams, balms, creams, powders, oils, waxes, serums, lotions, masks; hair straightening preparations; aerosol products for hair care and styling, hair spray, hair dyes and bleaching products, products for protecting dyed hair, hair waving and setting products and essential oils. The application is a national entry of 1187174 under the Madrid Protocol.
The mark was allowed on 30 April 2015, and it then published for opposition purposes.
Sano Factories opposed the mark issuing, and among other evidence, submitted a survey and opinion by marketing researcher Reuben Harari that, from the question asked as a multiple choice option, led L’Oreal’s counsel (Dr Shlomo Cohen & Partners Law Offices) to assume that there had been an earlier survey that produced less than favorable results and that the survey submitted was an attempt to frame the question more favorably. Sano based this assumption with reference to a survey of their own that led to very different conclusions.
L’Oreal’s counsel requested that Sano and the survey provider “New Wave Surveys” provide full details of the earlier survey. Their initial position is that that the duty of disclosure in legal proceedings is wide and the parties are obliged to make all relevant documents of record. To substantiate this position, they cited widely from the case-law.
On 15 November 2016, Sano’s counsel, Seligsohn Gabrieli & Co, responded that the survey provider is not party to the proceeding and so could not be ordered to provide anything. By its nature, any prior research to the survey that was conducted on behalf of the client that is not submitted is covered by attorney-client privilege and should not be disclosed. They further noted that L’Oreal claimed to have ordered a different survey themselves and so there was no justification for providing any wider survey. Sano’s counsel Seligsohn Gabrieli & Co finally noted that the patent office could have ruled a full disclosure of all relevant documents at any time and never did so, and there was no reason to justify them doing so at this late stage.
Cohen reiterated that the market researcher is obliged to reveal all working papers and raw materials that led up to the survey. Partial revelations by the Opposer’s counsel were damaging to the Applicants procedural and substantial rights. In this instance where only part of the survey related evidence is made of record, there is a duty of candid disclosure of the rest of it, and no confidentiality. He denied that L’Oreal had conducted a separate survey and considered this irrelevant as to whether Sano was obliged to reveal their survey results in full.
Both parties accept that the Israel Patent Office can request disclosure of all documents for inspection in trademark opposition proceedings to enable the parties to relate to the issues with all cards played face up, however, this was contingent on legitimate concerns of the parties such as efficiency of the proceeding.
It should be remembered that the result of proceedings at the patent office, such as whether a mark be registered or not, has public interest in that a registered mark makes private property out of something hitherto in the public domain. This makes it desirable for all evidence to be in the open.
The considerations regarding the duty of disclosure of documents in trademark cases was ruled by the then commissioner, in Opposition to Patent 60312 Genentech vs. Bio Technology General Corp 24 June 1999 as follows:
The possible damage to the efficiency of the proceeding due to the time at which a request to make evidence available, the amount of evidence, its subject matter, the importance of the claim that the evidence is supposed to clarify, the evidential weight, the possibility that the opposing party can obtain the evidence himself and the aggravation it causes the opposing party.
In this instance, the evidence is market research which may or may not have been undertaken by the Opposer. The request is based on the Applicant’s assumptions that since the Opposer submitted one type of survey, there must have been another type that provided undesirable results. The adjudicator of IP rejects these assumptions as an appropriate basis for demanding disclosure of documents.
It is stressed that the parties are allowed to submit only positive evidence, so long as they submit each piece of evidence in its entirety and do not submit only parts of documents. The Applicant is entitled to full disclosure regarding a market survey in terms of the questions asked, the breakdown of the population surveyed, the way the results were analyzed and so on. However, Ms Shoshani Caspi did not consider earlier preliminary surveys that may or may not have been conducted were ‘raw material’ that is indivisible from the survey submitted.
Ms Shoshani Caspi noted that the opposition had reached the end of the stage of submission of evidence and before the hearing, . She therefore considered that allowing the request would inevitably prolong the proceedings as the Opposer would be obliged to submit additional evidence. The Applicant would then wish to submit additional evidence and the Opposer would have the right to respond. This would inevitably drags things out and delay a ruling on the dispute. It may be assumed that the additional material is not extensive. However, it is not clear that this material (if it exists) has evidential weight regarding the market survey. The Applicant does not know if such a preliminary survey exists and if so, how it was conducted or what the results were so the Applicant cannot state with certainty that such a survey has evidential weight. Such a request creates unjustifiable work for the Opposer, as it damages their procedural and substantial rights.
The correct way to attack survey evidence brought by the opposing party is by conducting a counter survey. If one party considers that a survey was improperly conducted they should do a proper survey themselves to support their allegations. The present request seems to be a ‘fishing expedition’ for evidence.
The patent office considered that at the stage reached, it would create unnecessary and undesirable delays to allow such a request. In the scheduled hearing, the evidentiary weight of the surveys submitted will be considered and each side may attack the results of the surveys brought by the opposing party. The request is refused. No costs are awarded.
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