In its judgment of March 11, 2021, file reference 15 U 6/20, the Düsseldorf Higher Regional Court (OLG Düsseldorf) addressed the question of when a trade secret exists and when a trade secret is infringed.
When does a trade secret exist?
The plaintiff sought information and injunctive relief claims from the defendant due to the infringement of a trade secret under the Trade Secrets Act. The defendant is a competing company of the plaintiff. Both the plaintiff and the defendant applied for a contract to manufacture drums for centrifuges. The managing director of the defendant was a former employee of the plaintiff and sent an email to a subcontractor with the design drawings attached. The design drawings attached to this email were almost identical to the plaintiff's design drawings.
Are design drawings trade secrets?
The Regional Court ordered the defendant to cease and desist. It may not exploit the acquired design drawings and must provide information. Furthermore, the Regional Court established the defendant's obligation to pay damages.
In its reasoning, the court primarily stated that the design drawings constituted a trade secret within the meaning of the Trade Secrets Act. It could not be established that the design drawing was publicly known or easily accessible. The defendant had unlawfully acquired the trade secret, as its managing director had appropriated the design drawing during his employment with the plaintiff.
In its appeal to the Higher Regional Court of Düsseldorf, the defendant sought the complete dismissal of the action. The defendant argued that it had legitimately obtained any (potential) trade secret of the plaintiff. It contended that its actions were expressly permitted as reverse engineering under the Trade Secrets Act. The drums in question were standard spare parts. Moreover, the Regional Court had not established that the plaintiff had taken adequate secrecy measures.
When are trade secrets sufficiently protected within the meaning of the GeschGehG?
The Higher Regional Court of Düsseldorf dismissed the defendant's appeal.
The plaintiff had sufficiently protected the design drawings by implementing various contractual, organizational, and technical measures to safeguard the embodied confidential information from unlawful acquisition, use, or disclosure. In any event, the defendant's managing director, who had legitimately obtained the plaintiff's drawing during his employment, had breached an employment contract obligation to keep the secret confidential vis-à-vis the defendant. Furthermore, no inherently permissible reverse engineering (= reconstruction) was present, as the defendant failed to demonstrate that the content of the existing design drawing was entirely attributable to its own reconstruction.
Court decisions on the new Trade Secrets Act are rare
This extensive and instructive decision addresses, in part for the first time, many issues concerning the new Trade Secrets Act (GeschGehG). The decision indicates that trade secrets must have been seriously protected to enable the assertion of claims in the event of unauthorized disclosure. Furthermore, the content of the trade secret must be precisely defined to qualify as a trade secret, as anything obvious and already known cannot, of course, constitute a trade secret.
We have experience in enforcing claims related to trade secret infringement
Just a few weeks ago, GoldbergUllrich Rechtsanwälte PartG mbB successfully represented a company in a similar case, securing a court order to prevent the further dissemination and use of trade secrets.
Do you suspect or know that your trade secrets have been infringed? Time is of the essence! Contact us immediately; we will be glad to assist you.
Source: Higher Regional Court of Düsseldorf, Judgment of March 11, 2021, File No. 15 U 6/20
GoldbergUllrich Attorneys at Law 2021
Attorney at Law Christopher Pillat, LL.M. (Intellectual Property Law)
