• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

To bring an action without revealing trade secrets

25. January 2019

It is sufficient for the certainty of the claim that the requested prohibition is directed against a specific form of infringement. This guiding principle of the BGH is an important basis for filing an action without disclosing a business or trade secret.

Case law of the BGH on trade secrets

trade secretsThe  principle of legal certainty must not result in the plaintiff being forced to disclose business or company secrets in the action application, ignoring his legitimate secrecy interests, the Federal Court of Justice (Bundesgerichtshof, BGH) clarified in March 2018 in the case of hollow fibre membrane spinning plant II (I ZR 118/16).

An application for an injunction aimed at ceasing the manufacture, offering and placing on the market of a technical plant, which is based on the prohibition of the unauthorised exploitation of trade secrets pursuant to § 17.2 German Act against Unfair Competition (UWG), is sufficiently specific if the prohibition sought by the plaintiff is directed against a specific form of infringement, even if it does not contain a verbal description of the circumstances from which the plaintiff derives an infringement. A further clarification of details of the trade secret has no significance for the merits of the claim against a concrete form of infringement, but is only relevant for the scope of the prohibition tenor.

Former employee used inadmissible company secret

The applicant in this case is part of the F. Medical Care group. It alleges that the defendant unlawfully copied hollow-fiber spinning lines for the production of synthetic hollow fibers for dialysis filters and thus committed treason against secrets. The defendant is a chemist and was employed from November 1990 to June 1993 by the plaintiff’s legal predecessor as production manager. In this context, he had access to technical drawings and data sets for the manufacture of nozzles and a spinning system with nozzle heads, but was bound to secrecy under the terms of his employment contract and dissolution agreement (we reported: Private notices about trade secret are regarded as breach).

It was a complex construction, which was used exclusively in-house. The BGH therefore ruled in favour of the plaintiff. Due to the high level of agreement of the spinning plants at issue in the dispute, there was inadmissible recovery, the court found.

Protection of company and trade secrets at EU level

The protection of trade secrets is currently regulated in German law by the penal provisions of the Act against Unfair Competition (UWG) and the German Civil Code (BGB). Since 8 June 2016, however, there has also been an EU Directive 2016/943 on this area of law. The central idea of the directive is that access to trade secrets and their exploitation can represent a considerable economic value.

On 18 October 2018, the German Bundestag dealt for the first time with two bills on the protection of trade secrets and whistleblowers. There is a discernible tendency to seek to improve the legal protection of plaintiffs and defendants in the long term by means of rules on secrecy in court proceedings. Sections 16 to 20 in § 3 of the German draft law state: “In litigation on trade secrets, the court may, at the request of one of the parties, classify information in dispute as requiring secrecy, in whole or in part, if such information may be a trade secret. If the court makes such a decision, third parties who have a right to inspect the files may only be made available a file content in which the statements containing business secrets have been made unrecognisable”.

Would you also like to protect your patent or product prozess?

Then please do not hesitate to contact us. Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.

Please request your call-back without any obligations!

CAT-call_en

 

Sources:

Federal Court of Justice (BGH): I ZR 118/16 (in German)

Union directive 2016/943 on the protection of undisclosed know-how and business information (trade secrets)

Picture:

intographics /pixabay.com / CCO License  

 

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconInternational Intellectual Property,  Patent Law Tag iconclaim,  German patent law,  trade secrets,  to bring an action,  protection of trade secrets,  German Civil Code,  EU Directive 2016/943,  unauthorised exploitation,  forced to disclose trade secrets,  Germany

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Action against a patent already expired 26. February 2021
  • Design protection in China: Amendment 2021 25. February 2021
  • EPO practice of national patent offices – more uniform 18. February 2021
  • BGH: Black Forest ham – not only packaged in the Black Forest 16. February 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

26. February 2021
Action against a patent already expired

Action against a patent already expired

18. February 2021
EPO practice of national patent offices – more uniform

EPO practice of national patent offices – more uniform

15. February 2021
Employee’s invention in insolvency

Employee’s invention in insolvency

12. February 2021
Equivalence ruling of BGH: ‘Equivalent means’ in case Crane arm

Equivalence ruling of BGH: ‘Equivalent means’ in case Crane arm

5. February 2021
Trade secret: what are ‘appropriate’ secrecy measures?

Trade secret: what are ‘appropriate’ secrecy measures?

29. January 2021
Brexit: Changes for UK patent attorneys in GER

Brexit: Changes for UK patent attorneys in GER

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form