The Higher Regional Court of Düsseldorf (OLG Düsseldorf) dealt with the question of when a trade secret exists and when a trade secret is infringed in its judgment of 11 March 2021, reference 15 U 6/20.
When does a trade secret exist?
The plaintiff sought information and injunctive relief from the defendant for breach of a trade secret under the Trade Secrets Act. The defendant is a competitor of the plaintiff. Both the plaintiff and the defendant applied for a contract to manufacture drums for centrifuges. The defendant's managing director was a former employee of the plaintiff and sent an email to a subcontractor with design drawings attached. The construction drawings attached to this email were almost identical to the plaintiff's construction drawings.
Are construction drawings trade secrets?
The Regional Court ordered the defendant to cease and desist. It may not use the obtained construction drawings and must provide information. Furthermore, the Regional Court found that the defendant was obliged to pay damages.
In its reasoning, the court essentially stated that the design drawings were a trade secret within the meaning of the Trade Secrets Act. It could not be established that the design drawings were in the public domain or easily accessible. The defendant had obtained the trade secret without authorisation because the defendant's managing director had appropriated the design drawing during his employment with the plaintiff.
In its appeal to the Düsseldorf Higher Regional Court, the defendant sought the dismissal of the action in its entirety. The defendant was of the opinion that it had obtained a (possible) trade secret of the plaintiff in a permissible manner. The actions it had taken were expressly permitted as reverse engineering under the Trade Secrets Act. The drums were a standard spare part. Apart from that, the Regional Court did not find that the plaintiff had taken adequate confidentiality measures.
When are business secrets sufficiently protected within the meaning of the GeschGehG?
The Düsseldorf Higher Regional Court dismissed the defendant's appeal.
The plaintiff had sufficiently protected the design drawings by taking various contractual, organisational and technical precautions to protect the secret information embodied in them from unlawful acquisition, use or disclosure. In any event, the defendant's managing director, who had legitimately obtained the plaintiff's subscription during his employment, had breached an employment contract obligation to the defendant to keep the secret. Reverse engineering (= reconstruction), which is permissible in itself, is also not present because the defendant did not argue that the content of the present construction drawing was completely due to its reconstruction.
Court decisions on the new trade secrets law are rare
The comprehensive and instructive decision deals, in part for the first time, with many of the problems of the new Trade Secrets Act (GeschGehG). The decision states that trade secrets must have been seriously protected in order to be able to assert claims in the event of unauthorised disclosure of the trade secret. In addition, the content of the trade secret must be precisely defined in order to be considered a trade secret. After all, anything that is obvious and known anyway cannot, of course, be a trade secret.
We have experience in enforcing claims for infringement of trade secrets
Only a few weeks ago, GoldbergUllrich Rechtsanwälte PartG mbB successfully represented a company in a similar case and obtained an injunction and disclosure of trade secrets in court.
You suspect or know that your trade secrets have been violated? Now time is of the essence! Contact us immediately, we will be happy to help you.
Source: OLG Düsseldorf, judgement of 11.3.2021, file number 15 U 6/20
GoldbergUllrich Lawyers 2021
Attorney at Law Christopher Pillat, LL.M. (Intellectual Property Law)
