EUIPO member states agree on common practice regarding confidential evidence in trademark proceedings

On March 31, 2021 the European Union Intellectual Property Network published its Common Communication “Evidence in trade mark appeal proceedings: filing, structure and presentation of evidence, and the treatment of confidential evidence”, also referred to as “CP12”. As the title indicates, one of the topics addressed in these guidelines is how trademark offices in the EU should handle confidential information.

If you are a trademark owner there is a good chance that at some point during the lifetime of your trademark you will be obliged to present evidence regarding your trademark. This could be because a third party challenges the genuine use of your mark. Or maybe you want to demonstrate that your trademark is exceptionally distinctive or even has a reputation. If your mark is inherently weak you could still try to register it on the basis of acquired distinctiveness.

In each of these cases it is useful to present materials that allow determination of sales and turnover figures or expenditure for the promotion of your mark or information about business partners, suppliers and customers, i.e. documents that contain trade secrets or confidential information. It is therefore very well possible that you will be reluctant to submit this information, since you will want to prevent that third parties, especially competitors, have access thereto.

Indeed, as a general rule, documents in the possession of the trademark offices in the EU can be consulted by the public at large. However, if you do not submit the materials in question you may no longer be able to adequately defend your trademark rights before the trademark offices and therefore fall short of your objectives.

In order to mitigate this issue, you can ask the trademark office in question that your submission should be treated as confidential in order to limit its dissemination. This allows you to submit these materials nonetheless and thus better defend your rights, without having to worry that anyone has access to your trade secrets or confidential information.

With CP12, the EUIPO and trademark offices of the member states have agreed on a common practice for handling such requests.

First and foremost, your confidentiality request must indicate whether your submission should be kept confidential vis-à-vis third parties or also vis-à-vis the other party in inter partes proceedings.

In this regard it should be understood that in inter partes proceedings, each party has the right to defend itself and therefore must have access to all materials submitted by other side. Therefore, you will have to choose between the following scenario’s: (i) the disclosure to the other side is accepted, or (ii) your submission is redacted so that the confidential information is not legible, or (iii) the confidential item is withdrawn from the evidence. To this effect, the trademark office will ask you which option is preferred.

Furthermore, the confidentiality request should be accompanied by a reasoning that justifies the confidentiality and should indicate whether the evidence is confidential in full or only partly. It should be specified which parts are confidential and why and this should also be indicated in the index of the annexes submitted. The request should not be made in relation to information that is publicly available and should be limited to the general nature of the confidential data.

Once the request is submitted, the trademark office in question should assess the request on a case-by-case basis taking into account the laws on trade secrets as well as any special interest that you have put forward. If the explanations provided are sufficient, then the confidentiality claim should be respected. Should however the request contain no reasons for the confidentiality nor any special interest a deficiency may be raised. Such a deficiency should also be raised if the explanations are deemed to be insufficient. If the deficiency is subsequently not timely addressed the trademark office will lift the confidentiality.

In case the trademark office accepts the confidentiality claim it will mark its files accordingly and apply any means necessary to safeguard the confidential nature of the submitted materials. In this respect CP12 recommends that online access to materials marked as confidential should be blocked and that third party access requests to these materials be examined by the trademark office on an individual basis.

Decisions by the trademark office made on the basis of confidential information, will remain publicly available, however they should only refer to confidential information in a general manner, so that they do not disclose the trade secrets or confidential data. If the decision for any reason needs to include confidential information it will be redacted before is it publicly made available. The parties will of course receive an unredacted copy of the decision.

In conclusion, trademark owners should be aware that when they must submit materials containing confidential information in order to protect their interests, they have the option to request that the trademark office respects their confidentiality so that they are not made available to the public. It is however important that proper reasons are set forward justifying the confidentiality or any other special interests and that it is sufficiently specified which information should be treated as confidential.

At De Clercq & Partners we are happy to assist you in safeguarding your trade secrets during trademark proceedings. Please feel free to contact us at tmdesign@dcp-ip.com.