On 28
November 2013 the European Commission brought out its proposal for a Directive
on the protection of undisclosed know-how and business information (trade
secrets) against their unlawful acquisition, use and disclosure.
The
proposal results from a public consultation and an external study carried out
at the end of 2012 and during 2013 in connection with the relevance and
protection of trade secrets in the European Union and is made within the
framework of the global strategy adopted by the Commission aimed at optimising
the internal IP market.
Through the
external study the Internal Market and Services
Directorate General of
the European Commission had noted the marked differences existing between the
Member States with respect to the legal protection of trade secrets and to the
measures available to the holders thereof in the event of unlawful acquisition,
use and disclosure. For this reason the Commission has drawn up this proposal
for a Directive, within the general context of the harmonization of IP and
related rights in the EU, with a view to making the legal protection of trade
secrets more effective.
The
proposal begins with a definition of trade secrets taken word for word from
article 39.2 of the TRIPS Agreement. It then sets out the circumstances in
which the acquisition, use and disclosure of a trade secret is unlawful, where
the key element is the absence of consent of the trade secret holder. The
proposal similarly makes reference to the circumstances in which such
acquisition, use and disclosure is considered lawful. These include independent
discovery and reverse engineering.
The
proposal then establishes the measures, procedures and remedies that should be
introduced in the laws of the Member States for the protection of trade
secrets. The system of protection thus envisaged is similar to that relating to
IP rights and provision is consequently made for the adoption of interim and
precautionary measures and for the subsequent implementation of final measures
resulting from the decision on the merits of the case, such as an order for
cessation or prohibition of the use or disclosure of the trade secret and the
removal from the marketplace and destruction of the infringing goods. It is
likewise established that damages may be awarded to the holder for the
detriment caused, that these may be calculated on the basis of hypothetical
royalties, and that the judgment may be published. Lastly, provision is made
for the imposition of sanctions in the event of non-compliance with any
provisional or final measure adopted and reference is specifically made in this
regard to recurring penalty payments.
The
proposal introduces some procedural rules, such as the implementation of
mechanisms to preserve the confidentiality of trade secrets disclosed in court
for the purpose of litigation and the setting of a time limit of two years for
bringing actions for the infringement of trade secrets, which will, when the
time comes, require the amendment of the laws in Spain. It will also be
necessary to include measures aimed at avoiding abuses of litigation.
In
accordance with the ordinary legislative procedure, the proposal will now be
referred to the Council and to the European Parliament prior to its approval,
which the Commission expects will take place before the end of 2014. There will
subsequently be a term of two years for transposition into the national laws of
the Member States.
