Following the publication, on 8th February 2018, of the Draft Law on Business Secrets by the Spanish Ministry of Justice, which was formulated with the intention of transposing EU Directive 2016/943 of the European Parliament and of the Council of 8th June 2016, finally one year later, said draft law has been approved by the Spanish Senate.

On the occasion of this publication, we would like to recall the most important points of the law. It should be noted that some changes have been made to the preliminary draft:

According to Article 1 of the draft law, the purpose of the law is the protection of business secrets, which is broadly defined as “any information relating to any part of the company, including technological, industrial, commercial, organisational or financial information”. This information must comply with the following:

  1. Be secret, i.e. not generally known in the circles where this type of information is used, nor easily accessible.
  2. To have commercial value due to its secrecy, whether real or potential.
  3. The holder of the business secret must have implemented reasonable measures to keep it secret.

Article 2 of the draft law limits the above, indicating the methods of obtaining information that will be considered lawful, indicating:

  1. Independent discovery or creation;
  2. The observation, study, dismantling or testing of a product/object made available to the public or whose possession is lawful;
  3. Obtaining the business secret in the exercise of the right to information from workers and their representatives;
  4. Obtaining the business secret through fair commercial practices.

It also prescribes that civil actions for the violation of business secrets are not applicable if the business secret was obtained:

  1. In exercise of the right to freedom of expression and information, including respect for the freedom and pluralism of the media;
  2. With the purpose of discovering any fault, irregularity or illegal activity and in defence of the general interest;
  3. When the workers have brought it to the attention of their representatives, within the framework of the legitimate exercise by the latter of the functions legally attributed to them by European or Spanish law;
  4. In order to protect a legitimate interest recognised by law.

On the other hand, Article 3 lists the activities which will be considered illegal:

  1. The unauthorised obtaining of documents, objects, materials or substances, on any medium containing any business secret and any other action that, depending on the circumstances, is considered contrary to commercial practices. This point also includes obtaining the above through someone who should have known that he or she was obtaining a business secret directly or indirectly from someone who was using it unlawfully;
  2. The use or disclosure of a business secret obtained unlawfully or in breach of any confidentiality obligation;
  3. The production, supply or marketing of infringing goods or their import, export or storage for such purposes.

Articles 4 and 6 re-open the possibility for the holders of trade secrets to transfer or grant exclusive or non-exclusive licences for their use, respectively.

Article 5 of the draft law presented the civil actions that may be taken in the event of a breach of business secrecy, which can be summarised as follows: the declaration of the violation of business secrecy, the cessation, the seizure of the goods, the removal of the information unlawfully obtained, the attribution of ownership of the infringing goods, the compensation for damages and the publication or dissemination of the judgment in full or in part. However, this point has been moved to article 9 and the new article 5 addresses the co-ownership system of business secrets.

Article 7  indicated in the draft law that the statute of limitations for the above actions expires 3 years after the time when they were committed, however this point has been moved to article 11, and the new article 7 stipulates the responsibility of the transmitter or licensor of the business secrets without ownership or faculties, whenever they have acted in bad faith.

Article 9 indicates who has active legitimation to bring an action:

  1. The holder of the business secret.
  2. Those who can prove that they have obtained an exclusive or non-exclusive licence for its exploitation, which expressly authorises them to do so.

Section 3 of the law, that is to say, article 20 and thereinafter, indicates the possible precautionary measures that can be requested, which are based on the actions of article 9 and for which sufficient security must be provided to respond for damages.

Finally, it is important to mention that, in accordance with the fifth supplementary provision, the law shall enter into force 20 days after its publication in the Official Gazette, which shall take place in the upcoming days.

 

 

Pedro Blanco

Vilá Abogados

 

For more information, please contact:

va@vila.es

 

15th  February 2019