The imminent Spanish Trade Secret Act, driven by Directive 2016/943 on the protection of undisclosed technical know-how and business information, will represent a major step forward in Spain regarding the protection of trade secrets (in the same way as the respective national laws in Europe), placing it at the same level as intellectual and industrial property rights (patents, trademarks, designs and copyrights) by affording similar protection.
However, even a minimum standard of diligence concerning this issue calls for a plan for management of trade secrets for their protection and defence, for the reasons we shall explain.
It is important to note that not all confidential information is considered a trade secret. It is essential that it meets the requirements established by the Act (secret information, of real or potential business value and subject to reasonable measures to maintain its secrecy) in order for the information to be considered a trade secret since, whenever an attempt is made to assert this vis-a-vis a third party, the latter will argue that it is not a trade secret, obliging the owner to furnish evidence to the contrary.
Not only will those liable for prior acts of unlawful acquisition, use and disclosure be considered infringers but the Act also establishes objective liability for those who were aware or, under such circumstances, should have been aware about the unlawful origin. Even an “ultra-objective” liability is established since bona fide intermediaries (manufacturers, importers or sellers) are also liable when performing their activities and the product or service infringes the trade secret of a third party. All this places emphasis on the need to carry out business due diligence processes and to sign agreements passing on to suppliers the liabilities deriving from the infringement of trade secrets.
In the above context, it can be stated that this Act protects the owners of trade secrets, providing sufficient legal certainty for their activities in the marketplace. Therefore, by complying with the new Act, companies managing trade secrets correctly will have various legal mechanisms to prevent third parties from infringing their trade secrets.
Finally, we must stress the fact that correct trade secret management reduces the risk of trade secrets leaking through employees and third parties, providing added value to the sales or licencing processes.Authors: Javier Fernández-Lasquetty y Cristina Espín
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