In the context of trade marks, it is relatively common for parties to adduce sales and marketing figures (which are, more often than not, deemed confidential) as part of their evidence in support of their case. But should the confidentiality of the said sales and marketing figures be safeguarded, and if in the affirmative, under what circumstances? These were some of the interesting issues that arose for the first time before the Registrar of Trade Marks at the Intellectual Property Office of Singapore (IPOS) in an interlocutory application for confidentiality safeguards by TWG Tea Company Pte. Ltd. (the Applicant) and the objection thereto by T2 Singapore Pte. Ltd. & Tea Too Pty Ltd (the Opponent).
The Applicant sought to register the trade marks SINGAPORE BREAKFAST, NEW YORK BREAKFAST, LONDON BREAKFAST and CARAVAN, in relation to tea and other goods in Class 30. The Opponent filed an opposition against the application on the following grounds, inter alia: that the marks are devoid of any distinctive character under s7(1)(b) of the Trade Marks Act (Cap. 332), and that the marks are descriptive of the goods in question under s7(1)(c) of the Act.
The Applicant argued that, in any event, the marks have “in fact acquired a distinctive character as a result of the use made of [them]”, and pursuant to s7(2), that the marks should “not be refused registration by virtue of [s7(1)(b) or (c) of the Act]”. In support, the Applicant sought to adduce evidence of sales and marketing figures, which it asserted constitute confidential information. Accordingly, prior to disclosing the information to the Opponent, the Applicant sought various confidentiality safeguards. The Opponent refused to provide the said confidentiality undertaking, constraining the Applicant to apply to the Registrar for the confidentiality safeguards to be imposed on the Opponent.
In response to the fundamental question – whether there’s a difference between a case where a party is seeking confidentiality protection over information which it voluntarily puts forward in support of its case (as here), and a situation where it is compelled to provide the information - the Registrar answered in the affirmative, while also stating that a person should generally not be permitted to have his cake and eat it too.
Furthermore, the Registrar observed that it is unfair to impose confidentiality obligations on a party in respect of information that it never asked for in the first place, and that confidentiality undertakings should not be imposed in such cases. However, the Registrar, clarified that this does not mean that confidentiality safeguards should never be imposed (although the case for imposing such safeguards would need to be compelling). The Registrar then ventured to enlist some of the factors which ought to be considered, including the following:
- The importance of the information to the issues in dispute – the more critical the information, the less likely it should be kept private; in accordance with the principle of open justice, it is important to be able to ascertain the basis of a court or tribunal’s decision.
- The degree to which the information is confidential. The same type of information may already be accessible through public sources (for example, if the party providing the confidential information is publicly-listed, some of the information may be publicly available; some of the information may be available through industry or trade publications).
- How current the information is. In most trade mark disputes before IPOS, the tribunal is concerned with the status of matters at the date of application for registration of the mark in dispute. This could be a few years before the date when the information is provided; the older the information, the less likely that it will still be commercially valuable.
Whether the parties are competitors. If so, it would be more important to have confidentiality safeguards; but this cannot be decisive since the parties in such proceedings will in many cases be competitors.
The extent of the prejudice to a party should the confidential information be disclosed to its competitor. This will depend very much on the facts of each individual case; and
The stage of the proceedings. As the matter advances towards a hearing, it will become progressively more important for a party to be fully apprised of the case it has to answer, and it is plausible that more individuals within that party might need access to the confidential information to enable meaningful discussions as to the conduct of the case, including whether the possibility of a settlement should be explored.
Taking into account these factors, and applying it to the factual matrix of this case whilst balancing the various competing interests, the Registrar decided that the confidential information, and in particular the Applicant’s sales figures, should be protected by appropriate confidentiality safeguards at this stage.
Be that as it may, with respect to the Applicant’s request for a direction that the Opponent ought to provide an indemnity against “any loss, damage, liability, claims, demands, fees, costs and expenses (including legal and professional costs and expenses)” incurred by the Applicant arising from any breach of the undertaking by the Opponent, the Registrar ruled that this went too far and could not be granted.
The Registrar observed that, bearing in mind that the Opponent had not asked for the confidential information in the first place, it is all the more important that such onerous obligations should not be imposed on it.
This article was first published in the October /November 2019 issue of the CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA).