Trade secrets are protected by both the common law and European Law in England and Wales. The origins of common law protection are a case called Albert v Strange, which involved attempts to prevent the publication of extracts from Prince Albert's diaries. That case established the courts could prevent unauthorised use or publication of information not generally known by the general public which had been shared in circumstances of confidence.
The European aspect results from the UK's implementation of the EU trade secrets directive. This law runs in parallel with the common law and provides additional protection for trade secrets which have commercial value because they are secret. The emphasis of this new law which was enacted last year is that in order to be protected an owner needs to prove that they have taken reasonable steps to keep the trade secret a secret. If that is established and the secret has value then the courts will intervene to prevent unauthorised publication or misuse of that information.
There is a lot of overlap between the two different types of protection. However, the underlying basis for the two different types of protection are very different.
The underlying basis for common law is the idea that the courts will intervene to ensure that individuals keep information confidential when information is obtained in circumstances of confidence. In contrast, the new EU law views trade secrets much more as a form of business asset which can be identified by its value and the steps a trade secret owner takes to keep a secret secret.
If a trade secret can be kept secret then potentially it can have unlimited duration. However, it is necessary to take steps to ensure that the trade secret remains secret and trade secrets provide no protection if competitors come up with the same idea independently. All these factors need to be considered.
The most important consideration when choosing between patent and trade secret protection is the question of how easy it is to establish whether or not a third party is using a particular process or idea. If the use of a specific idea or processing will not be readily apparent in products put on the market then keeping an innovation secret is the better option. On the other hand, if the use of an idea or process will be evident once it is put on the market then potentially patent protection will provide stronger and more easily enforceable protection.
Recall of infringing goods is expressly stated as one of the corrective measures for misappropriation of trade secrets under the EU trade secrets directive. Other corrective measures include orders to amend infringing goods to remove an infringing element or to destroy infringing goods or injunctions to prevent use or disclosure or sale of infringing goods.
The issues in Europe are rather different from the US. Essentially the DTSA gave the Federal Courts jurisdiction over trade secrets issues. Before that, trade secrets were purely a matter for the state courts in the US. Since Europe does not have a Federal Court system this matter does not really apply.
In addition to the jurisdictional issues, the DTSA also has a harmonising role in that the Federal protection of trade secrets is harmonized across the various states whereas, although most US states have adopted the uniform trade secret laws some differences do remain.
Before the implementation of the EU trade secrets directive there were very significant differences in law across different EU countries.
By way of example in France protection was limited to protection of manufacturing secrets and in Germany and the Netherlands, trade secrets were protected under the general principles of unfair competition law.
Although these differences in national law remain the passage of the EU trade secrets directive means that the old protections are now supplemented by a uniform trade secrets law across the EU which in practice means that we are in much the same position as the US following the passage of the DTSA.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
