The EU Directive on the Protection of Trade Secrets and its Relation to Current Provisions in Germany
| Author | Thomas Hoeren |
| Position | Professor at the Institute on Information, Telecommunications and Media Law (ITM), University of Münster |
| Pages | 138-145 |
2018
Thomas Hoeren
138
2
The EU Directive on the Protection
of Trade Secrets and its Relation to
Current Provisions in Germany
by Thomas Hoeren*
© 2018 Thomas Hoeren
Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and
conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obtain ed at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8.
Recommended citation: Th omas Hoeren, The EU Direc tive on the Protecti on of Trade Secrets and its Relation t o Current
Provisions in Germany, 9 (2018) JIPITEC 138 par a 1.
Keywords: Know how protection directive; whistleblowing; implementation
and outlines the differences compared to the current
legislation concerning trade secrets in Germany. Fur-
thermore, the legal nature of trade secrets and possi-
ble consequences for the industrial practice are illus-
trated.
Abstract: In June 2018, the deadline for the
implementation of a new act reforming the trade se-
cret law expired. This contribution examines the un-
derlying EU Directive on the protection of trade se-
crets (Directive (EU) 2016/943, hereinafter “Directive”)
A. Introduction
1
Valuable information can leak from a company in
several ways; for example, employees with special
knowledge leave the company or disclose trade
secrets by photographing and storing documents.
Further, companies can be victims of cyber-attacks
and e-mails can be intercepted and read. The
estimated damage caused by industrial espionage
amounts to around 50 billion euros per year in
Germany.1 Internationally, the industrialized
countries have taken precautions through Article
39 (2) of the Trade-Related Aspects of Intellectual
Property Rights (TRIPS) Agreement. As a minimum
standard, the Member States of TRIPS have
committed themselves to protect information
against unauthorized outow as long as the
information is condential. Information is assumed
to be condential, if it:
* Professor at the Institute on Information,
Telecommunications and Media Law (ITM), University of
Münster.
1 Based on a statement of the former German secretary
of the interior Friedrich:
com/politik/deutschland/wirtschaftsspionage-50-
milliarden-schaden/8705934.html.?ticket=ST-997336-
p9E0C0UzIRMXdJfuARTh-ap4>.
• is not generally known or readily accessible to
persons within the usual business circles;
• has commercial value because it is secret; and
• has been subject to reasonable steps under the
circumstances to keep it secret.
2
In Germany, a special protection for trade secrets
exists in the traditionally criminal law provisions
of Sections 17 to 19 of the Unfair Competition Act
(UWG). These statutory offenses are sanctioned
under civil law as well (section 3 UWG, Section 823
(2) German Civil Code (BGB)). The standards of the
UWG had already existed when the TRIPS Agreement
became effective. Accordingly, the regulatory
objectives of the TRIPS Agreement and sections 17
to 19 UWG are not identical. New challenges occur
concerning the proof of the condential character of
information and concerning obligations to provide
evidence of appropriate condentiality agreements.
So far, there are huge differences concerning trade
secret protection within the European member
states.2 This persuaded the Commission to initiate
2 See Ohly, in: Gewerblicher Rechtsschutz und Urheberrecht
[GRUR] 2014, p. 1.
The EU Directive on the Protection of Trade Secrets and its Relation to Current Provisions in Germany
2018
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2
two comparative studies on the protection of trade
secrets in the European context in the years 2011
and 2013. The studies came to the conclusion that
the protection of secrecy in Europe resembles a
patchwork carpet.3 Thereupon, the Commission
adopted a rst draft of a harmonizing Directive in
November 2013.
4
A common text followed in May
2014, which was adopted by the Council of Ministers.
One year later – in June 2015 – the Parliament
presented its report on the draft Directive.
5
Based
on the report, the European Commission, the
Council and Parliament drafted a proposal through
(unofcial) trialogue negotiations, which was
published in December 2015.6 Finally, the Directive
was adopted in June 2016 7 and was to be transposed
into national law by June 2018.8 This led to the
discussion on the national level regarding whether
the protection of trade secrets should be included in
a comprehensive set of rules of intellectual property
rights,9 or at least regulated by a special law.10 In
Germany, the election for the Bundestag caused a
discontinuity of the preliminary drafts of the former
coalition. Thus, the Federal Ministry of Justice
3 Study on Trade Secrets and Condential Business
Information in the Internal Market, MARKT/2011/128/D
(April 2013), pp.12 f., 23, available at:
eu/internal_market/iprenforcement/docs/trade-
secrets/130711_nal-study_en.pdf>.
4 Proposal for a Directive of the European Parliament and of
the Council on the protection of undisclosed know-how and
business information (trade secrets) against their unlawful
acquisition, use and disclosure, COM/2013/0813 nal
-2013/0402 (COD), available at:
legal-content/EN/TXT/HTML/?uri=CELEX:52013PC0813&fr
om=EN>.
5 Report on the proposal for a Directive of the European
Parliament and of the Council on the protection of
disclosed know-how and business information (trade
secrets) against their unlawful acquisition, use and
disclosure, available at:
sides/getDoc.do?pubRef=-//EP//TEXT+REPORT+A8-2015-
0199+0+DOC+XML+V0//EN>.
6 Proposal for a Directive of the European Parliament and
of the Council on the protection of undisclosed know-
how and business information (trade secrets) against their
unlawful acquisition, use and disclosure – Analysis of the
nal compromise text with a view to agreement, available
at:
15382-2015-REV-1/en/pdf>.
7 Directive 2016/943/EU from June 6, 2016, ABI.L 157 l from
June 15, 2016, available at:
legal-content/EN/TXT/?uri=CELEX:32016L0943>.
8 Kalbfus, in: GRUR 2016, p. 1009; Ann, in Gewerblicher
Rechtsschutz und Urheberrecht-Prax [GRUR-Prax] 2016,
p. 465.
9 Mc Guire, in: GRUR 2016, pp. 1000, 1007 ff. with reference to
Italy and Portugal.
10 Like in Sweden for instance: Act on the Protection of Trade
secrets (1990), available at
text/jsp?le_id=241716>; see also AIPPI Report Q 2010, p.
215; Tonell, in: Kellezl/Kilpatrick/Kobel, Abuse of Dominant
Position and Globalization & Protection and Disclosure of
Trade Secrets and Know-How 2017, pp. 541 ff.
(BMJV) was required to reintroduce a draft bill into
the parliamentary debate. It was certain that the
deadline of implementation, which was June 2018,
could not be met. It is now clear that the ministry
plans an implementation by creating a special law,
implementing sections 17 to 19 of the UWG.11
B. Regulatory objectives
3
The Directive aims to harmonize the various
existing national rules.12 It is supposed to serve
as a complementary or alternative measure to
intellectual property rights (recital 2). The Directive
does not determine its relation to the UWG (recital
10). Besides, the Directive is supposed to contain only
a minimum standard of harmonization for now13
(Article 1 (1)). It should also be considered that the
EU has no competence for criminal law and does not
intend to regulate work council constitution law or
press law (Article 1 (2)). It is astounding that the
Directive does not contain any regulation on private
international law. It could be linked to the criminal
law, intellectual property rights, or the UWG. This
problem of classication underlines that the legal
nature of the newly created system is unclear. If the
system is classied in terms of intellectual property
rights, the Directive applies to all acts of use with
reference to the EU. Instead, the UWG asks for the
nal market intervention or the intended use of the
product.
C. The concept and legal
nature of trade secrets
4
The cornerstone of the Directive is the concept of
trade secrets.
14
It is broadly dened, wider than with
accordance to section 17 of the UWG.
15
A secret is
11 The draft is available at:
Gesetzgebungsverfahren/Dokumente/RefE_GeschGehG.
pdf?__blob=publicationFile&v=1>; McGuire, in: GRUR 2016
pp. 1000, 1008 had assumed that section 17 of the UWG must
be overruled or changed. Kalbfus in: GRUR 2016, pp. 1009,
1016 pleaded for a general law with civil law provisions and
for the incorporation of criminal law provisions especially
in the event of intentional form of breaches in this
general law.
12 Ann, in: GEWERBLICHER RECHTSSCHUTZ UND
URHEBERRECHT-Prax [GRUR-Prax] 2016, p. 465; Koos in
MultiMedia und Recht [MMR] 2016, p. 224.
13 Different the Commission draft, COM/2013/0813 nal –
2013/0402 (COD) (supra note 2); see also Kalbfus/Harte-
Bavendamm, in: GRUR 2014, p. 453.
14 Klein/Wegener, in : GRUR-Prax 2017, p. 394.
15 Kalbfus, in: GRUR 2016, pp. 1009, 1011 f. presents a slightly
different thesis, according to which the German jurisdiction
concerning section 17 of the UWG essentially complies with
the Directive. Nevertheless, he considers the transposition
2018
Thomas Hoeren
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already supposed to be existent if the information is
not generally known among or readily accessible to
persons within the circles that normally deal with
the kind of information in question. The denition of
those circles remains unclear.
16
Even the existence of
an outsider or a hacker makes information factually
accessible. However, this issue was already known
concerning section 17 of the UWG. The jurisprudence
based its decisions on whether gaining specic
information requires a great expenditure of time
and costliness and focused on the perspective of the
circle of experts.17 In addition, the trade secret must
embody a commercial value, lying precisely in its
secrecy.
18
This is completely unknown to German
readers, as section 17 of the UWG neither asks for
the value of information, nor the existence of a
secret. Instead, the German law has always been
based on the requirement of an objectively existing
economic interest. Thus, secrets without economical
value have been protected on the condition that
the disclosure of these secrets can cause damage.19
The denition is based on Article 39 of the TRIPS
agreement. Henceforth, it will be necessary to
document the value of information steadily before
the courts.20
5
On the one hand, this postulates a nancial
accounting of trade secrets. And on the other hand, a
proof of condentiality must be provided as a status
quo. Therefore, one will have to prove the existence
of a comprehensive secret management system that
goes all the way to encryption of e-mails and IT
security.21 But that is not all - it must be proven that
the information has been subject to reasonable steps
to keep it secret (Article 2 (1) (c)). Therefore, proactive
and continuous secrecy measures are needed in
order to preserve the condential character of the
information. This requires comprehensive, notably
long-term measures that are state-of-the-art.22 It is
of the Directive into a special German law as necessary.
16 McGuire, in: GRUR 2016, p. 1000 with the main proposal
for embedding the protection of secrecy into the system of
intellectual property.
17 BGH (Federal Supreme Court) Feb. 12, 1980, KZR 7/79,
Wettbewerb in Recht und Praxis [WRP] 1980, pp. 403, 404
– Pankreaplex II; BGH (Federal Supreme Court) Feb. 23,
2012 – lZR 136/10, WRP 2012, pp. 1230, 1232 – MOVICOL-
application for approval.
18 Sausa e Silva, in: Journal of Intellectual Property Law &
Practice 2014, p. 923.
19 Kalbfus, in: GRUR 2016, pp. 1009, 1011.
20 See also Hermann, in: Compliance Berater [CB] 2016, pp.
368, 369.
21 Pacini/Placid/Wright-Isak, in: International Journal of
Law and Management 2008, p. 121, with the presentation
of a “trade secret compliance plan” including different
measures that can be taken as well as different variables
that have to be considered depending on the company.
22 Kalbfus, in: GRUR-Prax 2017, p. 391; Börger/Rein, in: CB
2017, p. 118; to the special feature in the automotive
sector Steinmann/Schubmehl, in: Corporate Compliance
a novelty in Germany that legitimate condentiality
measures are a requirement of protection. So far,
they only played a role in evidence law. The Federal
Supreme Court (BGH) had so far decided that a
desire for secrecy resulting from the nature of the
matter was sufcient and even the absence of any
explicit condentiality agreement was regarded as
unproblematic.
23
For this reason, many people are
concerned about the meaning of the term “reasonable
steps”.24 The Directive does not clarify this concept.
It does not require the optimal or most effective
protective measures, but appropriate standards of
protection.
25
Thus, concrete steps have to be dened
for the intra-corporate implementation. The rst
step is to dene clear responsibilities for protecting
trade secrets within the company. Subsequently, the
potentially relevant know-how must be identied
and then evaluated and categorized according to the
size and industrial sector of the company. Ultimately,
precise protective measures must be dened,
including special contractual agreements, IT security
measures and the organization of workows.
26
In the
automotive industry, for example, care is taken to
ensure that measures are carried out and audited
concerning building technology, information
security and organization. The certication of the
IT security sector is carried out in accordance with
IS. 27001.27
6
Moreover, the dogmatic question remains
unanswered whether or not the trade secret is
recognized as a subjective right, similar to traditional
intellectual property rights. The legal nature of
trade secrets is highly disputed in Germany.
28
The
focus lies on the personal attribution of the right
and its exclusionary effect, which is rejected by the
majority concerning secrets because the character
of secrecy can easily disappear.29 Secrecy protection
does not intend to grant an exploitation right, but
Zeitschrift [CCZ] 2017, p. 194.
23 BGH (Federal Supreme Court) April 27, 2006 – I ZR 126/03,
WRP 2006, pp. 1511, 1513 – Customer data program.
24 See Kalbfus, in: Know-how-Schutz in Deutschland zwischen
Zivilrecht und Strafrecht- welcher Reformbedarf besteht?
2011, pp. 65 ff.; Kalbfus in: GRUR-Prax 2017, p. 391.
25 Kalbfus, in: GRUR-Prax 2017, pp. 391, 392; inapplicable
Steinmann/Schubmehl in: CCZ 2017, pp. 194, 198, who are
aiming for a purely factual protection of secrecy and fail
to recognize that the Directive has quite normative ideas
about the protection of secrets.
26 Kalbfus, in: GRUR-Prax 2017, pp. 391, 391 ff.
27 Steinmann/Schubmehl, in: CCZ 2017, pp. 194, 197.
28 For the classication of trade secrets as absolute rights see
Köhler, in: Köhler/Bornkamm, UWG, 35. Au. 2017, §17 Rn.
53; GRUR 1967, pp. 1, 6; different opinion Ann, in: GRUR-
Prax 2016, p. 465; McGuire, in: GRUR 2015, pp. 424, 426;
Hauck in: Neue juristische Wochenzeitschrift [NJW] 2016,
pp. 2218, 2221.
29 Ann, in: GRUR-Prax 2016, p. 465, GRUR 2015, pp. 424, 426;
Hauck in: NJW 2016, pp. 2218, 2221.
The EU Directive on the Protection of Trade Secrets and its Relation to Current Provisions in Germany
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rather a protection against unfair access. Recital
16 of the Directive states that the new provisions
of the protection of innovation and competition
do not create an exclusive right of know-how or
information, which is protected as a trade secret.
However, there are several reasons to dene the
character of trade secrets as a minor intellectual
property right. The preamble in recital 2 openly
characterizes the protection of secrecy as a
supplement or an alternative to the traditional
intellectual property rights. Concurrently, recital 3
states that trade secrets are one of the most common
forms of protection of intellectual creations and
innovative know-how. Even the scope of optional
sanctions argues in favor of a minor intellectual
property right, which is for example protected by a
triple damage calculation like traditional intellectual
property rights. Therefore, a trade secret is protected
just like an intellectual property right. Pursuant to
Article 2 No. 2, the proprietor of a trade secret is the
natural or legal person lawfully controlling a trade
secret. Thus, it is not the creator who is essential,
but the person exercising the lawful control. Yet, the
meaning of the term “control” remains unclear. If the
factual access possibility is taken into account, the
employee would be the original proprietor as long
as the employer has not received the information.
However, the Directive focuses on the protection
of companies; that is why there are no regulations
about secondary acquisitions of rights. Through
the characteristic of reasonable steps of protection,
an original acquisition by the entrepreneur is
established. This entails the obligation for companies
to create condentiality structures by contractual
and operational attendance and thereby establish
matters of original acquisition.30
D. The central prohibition
7
The central prohibition can be found in Article 4
(1) of the Directive. It should be noted that Article
3 emphasizes the principle of freedom of access.
Therefore, the Directive rstly lists fair commercial
practices. In any case, Article 4 includes only
exceptions for certain constellations in which the
principle of freedom of access cannot be applied.
This requires the Member States to ensure that the
trade secret holders are entitled to apply for all the
measures, procedures, and remedies to prevent, or
obtain redress for, the unlawful acquisition, use or
disclosure of their trade secret. These measures are
specied in Article 4 (2) and (3).
8
First of all, the acquisition of secrets is prominent
(Article 4 (2)). The English version of the Directive
refers to the term acquisition. However, in this case
30 Klein/Wegener, in: GRUR-Prax 2017, pp. 394, 396.
the ofcial German translation (“Erwerb”) is not
quite correct. It is not a question of acquisition in
return for payment, but rather of a factual obtaining.
If certain matters are given, the obtainment is illegal
without the consent of the copyright holder. This
includes unauthorized access to, appropriation of, or
copying of documents, materials or electronic les
that contain trade secrets or from which the trade
secret can be deduced.
9 These restrictive prohibitions of appropriation are
extended in Article 4 (2) (b), where any other conduct
will be sanctioned if it is considered contrary to
honest commercial practices. Yet, this term is very
imprecise and hard to dene. It is proposed to
outline it according to Article 39 (2) of the TRIPS
agreement.31
10
The list of prohibitions does not regulate the transfer
of individual information from an employee’s
brain. If an employee working as a programmer
reads company-owned programs and saves the
source code, this would not constitute a prohibited
conduct. Therefore, it can be assumed32 that the use
of information from an employee’s brain is free.
However, it may be possible to apply Article 4 (2)
(b) in certain cases of abuse. Yet, Article 1 (3) of the
Directive dictates that no provision of this Directive
may be interpreted as a basis for restriction to the
mobility of workers. Especially, the Directive is not
a basis for any restriction of the use of experience
and skills honestly acquired by workers through
the standard procedures of their employment.
Moreover, it is not a basis for imposing additional
contractual restrictions.
11 The use and disclosure of trade secrets is regulated
in Article 4 (3) of the Directive. People who have
unlawfully acquired the trade secret or have
breached a condentiality agreement or other
condentiality obligations are prohibited from using
the trade secret without the consent of the rights
holder. It remains unclear why the Directive includes
two different breaches of contract. This regulation
results in the enforcement of contractual obligations
by means of the UWG. The validity of the agreement
is irrelevant. The term ‘legally binding’, which was
originally included in earlier drafts of the Directive,
has been deleted without substitution.33 It is also
31 See Koos, in: MMR 2016, pp. 224, 226.
32 BGH (Federal Supreme Court) May 03, 2001 – I ZR 153/99,
WPR 2001, pp. 1174, 1176 – “injection molding tools”; BGH
(Federal Supreme Court) March 03, 1955 – I ZR 111/53,
GRUR 1955, pp. 424, 425; BAG (Federal Labor Court) June 15,
1993 – 9 AZR 558/91, Neue Zeitschrift für Arbeitsrecht [NZA]
1994, pp. 502, 505; BAG (Federal Labor Court) Dec. 15, 1987 –
3 AZR 474/86, NEUE NZA 1988, pp. 502, 504.
33 Kalbfus, in: GRUR 2016, pp. 1009, 1014 sees section 18 of the
Unfair Competition Act (UWG) as a counterpart to the new
regulation and demands its abolition in favor of a general
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new that an unlawful interference on Article 4 of the
Directive is sufcient for sanctions. The limitation of
intent and gross negligence, which were originally
intended in the draft, are not included in the nal
text.34 For this reason, the question of intention or
negligence only plays a role in the compensation of
damages according to Article 14 of the Directive. This
also does not correlate with the applicable German
law, which always presupposes at least negligence
of the defendant. In accordance with the Directive,
the secret holder can enforce claims for injunctive
relief and omission in the event of a mere breach
of secrecy. This corresponds with the current legal
situation in the case of breach of intellectual property
rights (cf. Sec. 14 (5) of the trademark law (MarkenG),
Sec. 139 (1) of the patent law (PatG). Consequently,
the Directive extends the protection of trade secrets
and brings them into line with intellectual property
rights.
E. Unlawful pre-acquisitions
and the extended liability
of the manufacturer
12
Further new regulations are included in Article 4 (4)
and (5) of the Directive. These extended matters of
liability are generally unknown to German law and
therefore dangerous.
13
Accordingly, the acquisition of secret information is
prohibited, if the person knew or negligently did not
know that that the trade secret had been obtained
directly or indirectly from another person who
was using or disclosing the trade secret unlawfully
(Article 4 (4) of the Directive). It is astounding that
even the indirect use of the external trade secret is
sufcient. Thus, the new system is different from
the old system of the UWG. Due to contractual
protection, third parties can only be held responsible
in the matters of Section 17 (1) or (2) No.1 of the
UWG. The new regulation is now directed against
any unlawful pre-acquisition of third parties. Section
17 focuses on stricter subjective elements (intent)
than the Directive (intent or negligence).35
14
In accordance with Article 4 (5), the production,
offering or placing on the market of infringing goods
or the importation, export or storage of infringing
regulation of trade secrets.
34 This modication was demanded among others by the Max
Planck Institute: Knaak/Kur/Hiity, in: International Review
of Intellectual Property and Competition Law 2014, p. 953.
35 In addition to this see Wiese, in: Die EU-Richtlinie über
den Schutz vertraulichen Know-hows und vertraulicher
Geschäftsinformationen. Inhalt und Auswirkung auf den
gesetzlichen Schutz des Unternehmensgeheimnisses,
Dissertation Münster 2017, pp. 141 ff.
goods for those purposes, are considered an unlawful
use of a trade secret. However, this only applies if
the person who carried out these activities had
knowledge of the fact or should have known the
fact under the specic circumstances that a trade
secret had been used illegally. In some cases, such
breaches of secrecy are prohibited by Section 17 (2)
No. 2 of the UWG, because the production of a good
is considered an exploitation along the meaning of
the provision.
36
In accordance with the Directive the
use of supplier-related data, obtained illegally by
third parties, is related to the production. Thus, legal
protection exists against any person who is part of
the downstream distribution chain, even if he or she
is unaware of the secret and even if the secret is not
embodied in the product.37
F. Exceptions and limitations
15 These are the innovations that evidently go beyond
the matter of fact of Section 17 of the UWG. In
compensatory terms, the matter of fact of the
limitations and exceptions of the directive has
grown exorbitantly in the course of the negotiations.
Such limitations can be found in Article 3 and 5 of the
Directive. The placement of the central prohibition
in Article 4 is unfamiliar, surrounded by Article
3 and Article 5. The delimitation of the specic
matter of facts is also unclear. While Article 5 states
´exceptions´, Article 3 mentions ´lawful acquisition,
lawful use and lawful disclosure´. It is problematic
how these linguistic nuances can be reected in
the implementation. For example, Article 3 of the
Directive could be an exempting element, while
Article 5 could be seen as a justication. Therefore,
Article 3 would be understood as a limitation and
Article 5 as an exception. The current ministry draft
follows this evaluation.
I. Limitations and exempting
elements (Article 3)
16
Article 3 (1) (a) denes independent discovery or
creation as legitimate. The concept of discovery
refers to patent law, while creation is a typical
term in copyright law. In fact, in the event that an
identical invention has been made independently of
one another by several persons, patent law regulates
that the right is vested in the person who rst
applied for the invention at the Patent Ofce (Sec. 6
(3) of the patent law (PatG), Article 60 (2) EPC). The
subsequent applicant is then protected, if necessary,
by a right of prior use (Sec. 12 (1) patent law (PatG)).
36 Kalbfus, in: GRUR 2016, pp. 1009, 1014.
37 Kalbfus ,in: GRUR 2016, pp. 1009, 1014.
The EU Directive on the Protection of Trade Secrets and its Relation to Current Provisions in Germany
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The phenomenon of double-creations is also known
in copyright law. This is not an infringement of
rights, but a black mark on the copyright map and
a bizarre constellation of exceptions in which both
authors can assert their rights.
17
Article 3 (1) (b) regulates the general freedom of
testing. The regulation permits the analysis and
testing of a product which has been made public
or is lawfully in the possession of the purchaser
of the information. Thus, the Directive is breaking
new ground. It is a European regulation on reverse
engineering, which is known from US law. In
Germany, reverse engineering is traditionally
considered as prohibited.38 Traces of reverse
engineering can be found in copyright law (Sections
69d (3), 69e of copyright law (UrhG)) and are
regulated in detail in patent law (section 11 No. 1
and 2 PatG). The semiconductor protection law
implies a detailed permission of reverse engineering
(section 6 (2) No. 1 and 2 HalblSchG). It regulates
the reproduction of topographies for the purpose
of analysis, evaluation or education, as well as the
commercial exploitation of topography as a result
of an analysis or evaluation. The freedom of testing
refers to a product that has been made accessible
to the public or is lawfully owned by the acquirer
of the information. The principle goes far beyond
the exhaustion doctrine of the copyright and patent
law and also relates to rented products. According
to an astonishing small addition, the acquirer of the
information must be exempt from legal obligations
in order to use the secret. Therefore, it is allowed to
limit the freedom of testing contractually. Thus, an
indication on reverse engineering should be included
in supply contracts and cooperation agreements
and such conduct should be excluded. In addition,
in recital 17 of the Directive, the Commission has
given some thought to cases of parasitic copying,
where a regulation in the UWG (product piracy or
slavish counterfeiting) should also be considered.
However, contractual limitations are usually
pointless if there are no contracts at all. No one can
prevent a producer from purchasing a competing
product on the free market and rebuilding it by
means of testing. Article 3 (1) (c) regulates the right
of work council to pass on information under the
application of other European or national law. There
is a provision for this in Germany in Section 84 of the
Works Constitution Act (BetrVG), which provides
38 RG Jan./ Nov. 22, 1935 – II 128/35, RGZ (decision of the
Imperial Court) pp. 149,329,331 – Stiefelsenpresse; also
compare OLG Hamburg (Higher Regional Court Hamburg)
Oct. 19, 2000 - § U 191/98, Gewerblicher Rechtsschutz
und Urheberrecht-RR [GRUR-RR] 2001, p. 137; In addition
to this Beater in: Nachahmen im Wettbewerb – Eine
rechtsvergleichende Untersuchung zu Paragraph 1 UWG
1995, p. 136. Kochmann in: Schutz des “Know-how” gegen
ausspähende Produktanalysen (“Reverse Engineering”)
2009, p. 140.
an explicit right for the employee to complain to
the work council. However, the Directive explicitly
allows in recital 12 that work councils may have
agreed to secrecy with the employer. Nevertheless,
Section 79 of the BetrVG binds the members of the
work council to not disclose or exploit trade secrets.
There is a similar provision for individual personal
measures in sections 99 (1) (2), 102 (2) (5) of the
BetrVG.
18 Article 3 (1) (d) permits all other forms of conduct,
which are consistent with legitimate business
practices. Therein lies an opening clause for
the benet of the judiciary based on the fair-
use limitation of US law. Recital 18 mentions the
disclosure of trade secrets in audit law as an example.
II. Exceptions and
justifications (Article 5)
19
The regulation of exceptions in Article 5 of the
Directive is new. Firstly, companies are exempted
in the eld of press and freedom of information.
A reference is made expressly to Article 11 of the
Charter of Fundamental Rights. Thereby, not only
traditional press companies are addressed but
possibly bloggers as well.
20
Article 5 (b) contains the second institution,
which is still foreign to European law, namely
whistleblowing.
39
Whistleblowing is dened as the
disclosure of misconduct, wrongdoing or illegal
activities. The distinction between these matter of
facts remains unclear. It is also unclear whether a
minor infringement is sufcient as a justication of
disclosing misconduct. Moreover, the whistleblower
can only refer to the limitation if he has acted in the
general interest.40 It is undetermined whether the
intended purpose should be considered as subjective
or objective. Recital 20 refers to a conduct which
objectively serves the general interest. In addition,
the preamble of recital 20 excludes conduct which,
according to national court judgments, can be
qualied as good faith. The Directive is in line with
European and national initiatives to strengthen the
whistleblower protection. For a long time, the only
existing regulation in Germany was the Occupational
Health and Safety Act (Arbeitsschutzgesetz).
Furthermore, in individual cases Section 34 of the
Criminal Code (StGB) and the duty to disclosure
in accordance with Section 138 of the StGB have
been considered. Apart from this, the labor law
39 Groß/Platzer, in: NZA 2017, p. 1097; Eunger in: Zeitschrift
für Rechtspolitik [ZRP] 2016, p. 229.
40 Lapousterie/Geiger/Olszak/Desaunettes, in: European
Intellectual Property Review 225 2016, Centre for
International Property Studies (CEIPI) Research Paper No.
2015-02, pp. 8 ff.
2018
Thomas Hoeren
144
2
jurisdiction was very restrictive and prohibited the
complaint, in particular in the public eye, before
making use of internal compliance systems. Thus,
on July 2nd 2016 the Financial Services Supervision
Act (Finanzdienstleistungsaufsichtsgesetz) already
exempted employees of the nancial sector from
prosecution who reported maladministration in
the company to the Federal Supervisory Ofce for
Insurance. Contrary to previous and restrictive
German law, the Directive allows the disclosure
of maladministration in the press without the
consideration of company-internal remedies.41
21
The burden of proof for the accuracy of
whistleblowing is difcult to ascertain. The
exceptional nature of Article 5 of the Directive
indicates that the whistleblower must prove that
the disclosure of the questionable trade secrets
serves the protection of public interest. However, it
is also conceivable that the company has to provide
evidence for the accuracy or inaccuracy of the
whistleblowing. This evidence is incumbent on the
company, while the whistleblower must prove that
he acted in the public interest.
22
Article 5 (c) mostly excludes the communication
between employees and work council from
the protection of trade secrets. A limitation of
complaints or the notication of maladministration
is not conducted. In any event, all communication is
exempted if it is necessary for the practice of work
councils. There is a general clause in Article 5 (d)
according to which any legitimate interest justies a
limitation that is permitted by Union law or national
law.
G. Sanctions
23
No criminal sanctions are regulated as the EU has no
competence in this regard. It is rather intended to
bind the member states to introduce a civil sanction
system. This involves numerous legal consequences
that have so far only been granted for monopoly
rights and an extensive protection against illegal
acquisition, as well as illegal use and disclosure of
trade secrets. Included are claims for destruction
or release of documents, objects, materials,
substances, or electronic les which contain the
secret. Furthermore, it also includes a recall claim
for infringing products and the removal as well as
the destruction of them. Claims for damages are also
regulated in detail. However, there is no right for
41 BAG (Federal Labor Court) Dec. 07.2006 – 2 AZR 400/05, NZA
2007, 502; implementation of the case law of the BVerfG
(Federal Constitutional Court) July 2, 2001 – I BvR 2049/00,
NJW 2001, p. 3474 in the decision of the BAG (Federal Labor
Court) July 03, 2003 – 2 AZR 235/02, NZA 2004, pp. 427, 430;
Ohly, in: GRUR 2014, pp. 1, 7.
information, which is provided by other property
rights (see Section 140 (b) Patent Law (PatG) and
Section 242 BGB).
24
It is now up to the Ministry of Justice to clarify to
what extent individual sanctions already exist in
German law. The Federal Supreme Court (BGH)
recognized the option of triple damage calculation
42
for section 17 of the UWG. A new system of recall
and removal from the distribution channels is likely.
25 Compensatory to this bouquet of claims is the new
extensive regulation of abuse control (Article 7).
The Member States must establish opportunities to
protect the defendant from abusive claims. These
measures go beyond Section 8 (4) of the UWG.
These sanctions of abuse include damages for the
defendant, sanctions against the plaintiff, or the
dissemination of information concerning court
decisions. Such measures are currently unknown
in Germany. Known is only a claim for damages in
the case of unjustied protective right warnings,
i.e. in the case of warnings from special industrial
protective rights. In the UWG it is recognized that
a careless warning, as a false assertion, justies a
claim for damages as an illegal encroachment on the
established and exercised business.43
26
The measures of legal remedies include in particular
the interim injunction (Article 12), which is focused
on injunctive omission, cancellation, and prohibition
of sale. Instead of the injunctive relief a right of
compensation (license analogy) can be considered,
regardless of negligence or fault (Article 13 (3)). The
compensation for damages (Article 14) applies to
the triple damage calculation, including lost prot,
infringing prot of the violator, or license analogy.
The option of increase in the event of moral risks of
harm is remarkable. It was not noted in the Directive
that additional claims may occur for example in
Germany from Section 812 and 687 (2) of the BGB.44
Moreover, the statutory limitation shall not exceed
six years.45
H. Conclusion
27
The Directive will permanently change European
secrecy law. Compared to current German
regulations, important differences can be observed,
42 BGH (Federal Supreme Court) Feb. 18, 1977 – I ZR 112/75,
WRP 1977, pp. 332, 335 – on-line computer.
43 LG Hamburg (Regional Court Hamburg) May 8, 2012 – 407
HKO 15/12, BeckRS 2012, p. 18887.
44 See Hauck, in: NJW 2016, p. 2218.
45 It is not intended to deal with the procedural changes made
in the Directive, such as the correction of the Düsseldorf
model.
The EU Directive on the Protection of Trade Secrets and its Relation to Current Provisions in Germany
2018
145
2
concerning for example the denition of a trade
secret or the legitimacy of reverse engineering.
Therefore, the nal implementation of the Directive
can be suspenseful. In the meantime, companies
are summoned to conduct concrete condentiality
measures and to adjust to the changed eld of
secrets. In this context, extended nondisclosure
agreements and a strategy to deal with the freedom
of reverse engineering are most important. A new
culture of secrecy in companies and with suppliers
must be added.
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