Confidentiality of evidence filed in inter partes proceedings

Under the Trade Marks Act 1938, evidence filed in inter partes proceedings was not and is not available for public inspection. Any request for evidence to be treated as confidential therefore relates to the withholding of documents from the other party or parties to the proceedings but, usually, not from their legal representatives. Rule 127 of the Trade Marks and Service Marks Rules 1986 applied.

Under the provisions of the Trade Marks Act 1994, all documents filed are available for public inspection. Any request for confidentiality will therefore, prima facie, be taken to be a request for a Direction to withhold the document from inspection by the public. If it is intended to seek to withhold the document from the other party or parties to the proceedings (or made available only to their legal representatives), then the request that evidence be treated as confidential under the provisions of Rule 51 of the Trade Mark Rules 2000 must make it clear that not only is a Direction sought to withhold the document from inspection by the public but that, in addition, access to the document is to be allowed only to a party’s representative.

Practitioners should therefore note carefully the difference in emphasis as between the respective statutes on the subject of confidentiality of documents and ensure that any request to the Registrar makes clear precisely the order they seek.

Orders for confidentiality will not, however, be issued as a matter of course. Requests must continue to be supported by full and detailed reasons in each case.

In considering requests the Registrar will bear in mind the comments of Upjohn LJ in Re K (Infants) [1963] Ch 381; where he states:

• "It seems to be fundamental to any judicial enquiry that a person or other properly interested party must have the right to see all the information put before the Judge, to comment on it, to challenge it and if needs be to combat it, and to try to establish by contrary evidence that it is wrong. It cannot be withheld from him in whole or in part. If it is so withheld and yet the Judge takes such information into account in reaching his conclusion without disclosure to those parties who are properly and naturally vitally concerned, the proceedings cannot be described as judicial".

Also the comments of Mr Justice Whitford in Diamond Shamrock Technologies SA [1987] RPC91; where he states:

• "It is commonplace with a variety of proceedings, and patent proceedings are no exception, that the parties to the proceedings want material to be kept confidential. There are matters which they do not want to be disclosed to the public at large. What is said in these letters is that this, that or the other information contained in the declarations or exhibits should be kept confidential because "it contains sensitive commercial information".
  
  I think it is desirable that a more exact indication should be given as to the reasons why in truth the document ought not to be disclosed because it is easy enough to talk about the material being of commercial interest and to talk of it being sensitive. That fact in itself does not necessarily mean that the material, which would otherwise become public property because it was included in the documents which are going to be open to public inspection, is to be excluded from public inspection".

The Registrar takes the view therefore that any party to proceedings before him has the right to see all the evidence laid before the Registrar by the other side. Only in exceptional circumstances and for the most transparent and compelling of reasons will the Registrar issue a Direction which denies the other side the opportunity to counter evidence filed in support of the pleadings against him.