Welcome to the latest edition of IP@OC, Osborne Clarke’s quarterly international IP newsletter.
In this edition we focus on trade secrets. Back in 2015, alongside an interview with industry insiders, we looked at how the law on this crucial area varied significantly across some key European jurisdictions. Fast-forward to 2018, the deadline for Member States to implement the Trade Secrets Directive is (finally) now almost upon us. Yet, for an area notorious for its inconsistency of treatment, it is surprising how many Member States have concluded that they do not need to take any action to be able to comply with the Directive. Taking Spain as an example, we look at how the Directive compares with the national law as it currently exists. We also look at how some of the key concepts have been applied by national courts, focussing on Italy.
In reality, the best form of protection is usually contractual. We set out some tips from France and Germany on drafting NDAs and R&D agreements. As we conclude in our lead article, which draws from several jurisdictions, when it comes to trade secrets, the law helps those who help themselves.
Our round-up of key cases includes CJEU decisions on parallel imports, design rights, and the hot topic of spare parts, champagne (and other protected designations of origin) and, returning to our theme, the protection (or not) of secrets.
We hope you enjoy these articles. If you would like to discuss any of the issues raised, please contact any of the experts listed below or your usual Osborne Clarke contact.
Trade secrets | The law helps those who help themselves
By May this year, the Member States of the European Union must implement the Trade Secrets Directive into their national laws. To what extent this will happen remains to be seen, and it is highly likely that questions will soon be referred to the CJEU to establish exactly what those standards require.
But whether under existing national laws or the Directive, the key point businesses need to understand with respect to their trade secrets is that, in this area, the law helps those who help themselves.
Trade secrets in France | Contractual protections and practical measures
NDAs and R&D agreements are crucial to protecting the confidentiality and value of trade secrets. Yet, even before drawing up an NDA, steps should be taken to establish prior evidence of trade secrets, and alongside the contractual protections, practical steps should be taken to ensure the effectiveness of those protections.
Trade secrets in Germany | Top tips for NDAs and confidentiality clauses
Effective NDAs and confidentiality clauses form the basis for a successful R&D project. We set out some top tips for ensuring that your contracts are effective, and are compatible with the Trade Secrets Directive.
Trade secrets in Italy | How have the courts interpreted key concepts?
Italian law already provides far-reaching protection for trade secrets. The approach that the Italian courts have taken to issues such as client lists, employee skills and knowledge, and quality control procedures give a useful illustration of some the common challenges in protecting trade secrets.
Trade secrets in Spain | How does the Trade Secrets Directive compare to the current law?
Like many jurisdictions, Spain has not yet implemented the Trade Secrets Directive. Changes are needed, since although there is some protection for trade secrets, Spain lacks specific legislation on trade secrets. While a number of existing concepts will remain, the Directive will introduce new remedies, double the limitation period for bringing claims and bring procedural changes to the way that trade secrets can be protected.
CJEU decision casts doubt on ability to prevent parallel imports following de-mergers
A trade mark registration which is transferred between companies in a de-merger or re-structuring will not always enable the new owner to prevent the importation into its territory of identically named products manufactured by the other, even though the companies are now competitors and the products were not put on the market by the claimant company.
Pop the cork! CJEU rules that sorbet can be sold under the name “champagne”
In a recent decision, the CJEU held that a sorbet could be sold under the name “Champagner Sorbet” if it had, as one of its essential characteristics, a taste that was primarily attributable to champagne.
The case clarifies the broad scope of protection given to protected designations of origin (PDO) and the circumstances in which a company may legitimately use a name containing a PDO to sell its products.
ECJ widens the notion of “spare parts” falling under the repair clause
On 20 December 2017, the CJEU ruled on the important repair clause in the Community Design Regulation in two cases referred from Italy and Germany. This decision will have a huge impact on EU registered designs for components of complex products, and will increase competition in markets for spare parts.
Can collection and analysis of information from the public domain be a trade secret?
The CJEU handed down judgment on 5 February 2018 in a long running dispute over data, claimed to be confidential, which appeared in reports prepared by the European Medicines Agency.
Documents held by EU institutions are generally accessible to third parties, so it has long been accepted that third parties may request access to such data. But in this case, for the first time, the Court has explained how the confidentiality of the information should be assessed.
Over the coming month we are holding a series of seminars in each of our UK offices, looking at the most important developments in IP law in the UK and the EU over the last 12 months. Details are below, along with links for you to register your interest in attending any of those seminars.
- 21 February 2018 (London) | Major changes and current issues for IP specialists (register your interest).
- 7 March 2018 (Reading) | Major changes and current issues for IP specialists (register your interest).
- 13 March 2018 (Bristol) | Major changes and current issues for in-house lawyers (register your interest).