The protection of trade secrets

On April 14, 2016 the European Parliament announced the approval of the Directive EU n.2013/042 for the protection of trade secrets.

There is a broad category of information which, although not having the requirements to be protected by the traditional tools of intellectual property (patent, models, copyright), are, however, an important economic resource for companies: for example, the result of research and development processes.

The purpose of the directive is to approximate the laws of the member States relating to trade secrets, also in order to make the European Union stronger towards third countries.

As stated by the Directive, trade secrets are the information characterized by the following requirements:

• it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or easily accessible to persons within the circles that normally deal with this kind of information;
• has commercial value because it is secret;
• has been subject to reasonable steps, under the circumstances, to keep it secret by the person lawfully in control of the information.

The Directive provides for the possibility that the courts of the Member States adopt, where required, interim and precautionary measures.

If a judicial decision is taken finding an unlawful acquisition, use or disclosure of a trade secret, the Directive provides for that the competent judicial authorities may, at the request of the applicant order against the infringer (article 11 of the Directive):

• the cessation of or, as the case may be, the prohibition of the use or disclosure of the trade secret;
• the prohibition to produce, offer, place on the market or use infringing goods, or import, export or store infringing goods for those purposes;
• the adoption of the appropriate corrective measures with regard to the infringing goods

With regard to damages, the Directive (article 13) requires to take into consideration all relevant factors, such as “the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other that economic factors, such as the moral prejudice caused to the trade secret holder by the unlawful acquisition, use or disclosure of the trade secret. However, the competent judicial authorities may also, in appropriate cases, set the damages as a lump sum on the basis of elements such as, at a minimum, the amount of royalties or fees which would have been due if the infringer had requested authorization to use the trade secret in question”.