Protection of Trade Secrets in Civil Proceedings in Israel

In a recent decision (Oppositions to Register Trademarks Nos. 222,501 and 226,634 MOOI SWEET WONDERS (logo) and MOOI, Mewah Brands (S) Pte Ltd. v. Danshar Ltd., 16 November 2011) the Israeli Patent Office discussed in brief how to protect trade secrets under the Israeli Civil Procedure Rules. The Opposer filed a motion for an order to protect trade secrets in the evidence it filed with the Patent Office. The Opposer moved the Patent Office to issue a gag order the deposit of the evidence in the Patent Office safe. The Opposer also moved the Patent Office to prevent review of the evidence by the opposing party. The motion referred to information about the sales of the Opposer. The Patent Office accepted the motion in part. The Patent Office stated that failure to pass evidence to the opposing party will harm that party’s right to a fair process. Moreover, the Patent Office stated that providing the information only to the attorneys would also prejudice a party’s right to a fair process because the communication between the attorney and that party would be limited and the attorney may not be able to properly represent that party (See also Opposition to Register Trademark Number 218,556 NYLFEX, Nuplex v. Nynas, 27 July 2011). The Patent Office reviewed the materials filed by the Opposer and determined it was to be classified as a trade secret. The Patent Office provided that the law sets three kinds of orders designed to protect trade secrets in civil proceedings: 1. According to section 23(a) of the Commercial Torts Act, 1999 the court may order that a trade secret discovered during proceedings would not be revealed; 2. section 23(b) provides that the court may grant a Protective Order setting out how the evidence is to be filed. This Protective Order may include instructions in three dimensions: a. the dimension regarding the recipients; b. the dimension associated with the content; and c. the dimension associated with the timing. Section 23(c) discuss the protection of trade secrets when section 23(b) is insufficient, balancing the need for discovery against the harm of not discovering the evidence. In the present case the court did not see a need to use section 23(c) stating that the use of the trade secret in the case is required for the Opposer to show its case, but its exposure may damage the Opposer. Moreover orders under sections 23(a) and (b) would be sufficient. The Patent Office therefore ordered a gag order under section 23(a) and issued a protective order under section 23(b) ordering that the respondent would not make any use of the trade secret for any purpose aside for the proceedings before the patent office and will refrain from transfer of the trade secrets to any third party. The Patent Office refused to keep the evidence in a safe rather ordered that it will be clearly indicated on the face of the evidence it is confidential and would not be provided to any third parties.