The International Association for the Protection of Intellectual Property (AIPPI) recently published the four resolutions that were adopted at its World IP Congress in Rio de Janeiro last month. These resolutions are based on the feedback received throughout 2015 from the national AIPPI-groups around the globe and on the panel discussion at the congress. Hereunder we briefly discuss the resolution on “Question Q247 Trade secrets: overlap with restraint of trade, aspects of enforcement”, which addresses four aspects of trade secret law.

  1. Should trade secret law be curtailed so as to prevent that it becomes an unlawful restraint of trade?

AIPPI finds that many jurisdictions define trade secrets sufficiently narrow so as to avoid free trade- and antitrust issues. AIPPI resolves that although as a general rule trade secret misappropriation should be enjoined, any person should nonetheless be free to make fair use of the general knowledge, skills and experience the acquired while performing their profession.

  1. How can the secrecy of trade secrets be safeguarded when taking legal action?

With respect to confidentiality of trade secrets during court proceedings, AIPPI resolves that such secrecy should be preserved by reasonable means. These may include: protective orders in connection with discovery-related proceedings, in camera hearings, sealing of records containing alleged trade secrets, omitting trade secrets from publicly available information regarding the court proceedings as well as confidentiality orders.

  1. What is the nature and availability of compensation for trade secret violations?

Although injunctive relief should be the prime remedy according to AIPPI, a trade secret proprietor should be able to recover his actual loss caused by the disclosure and/or unlawful use. This loss should also cover lost profits and reputational loss. The unjust enrichment by the infringer should also be compensated, if this is not included in the actual loss. If proving such a loss would not be possible, a minimum level of compensation should be awarded, based on a reasonable royalty measured by the court. AIPPI specifies that the value of a trade secret should be assessed prior to its unauthorized acquisition, disclosure or use.

  1. How can evidence of trade secret violations be gathered?

As such measures are not widely available in all jurisdictions, AIPPI resolves that a court should be able to grant ex parte measures to preserve evidence of trade secret theft or unlawful use, but also to prevent (further) use of the trade secret in question. According to AIPPI the ex parte request should include a full and frank statement of all potentially relevant information and be followed as soon as possible by inter partes (opposition) proceedings. The seized evidence may only be used in trade secret-based proceedings for which it has been preserved. AIPPI concludes its resolution by stating that if the defendant prevails after these inter partes proceedings, he should be able to recover any damage caused by the ex parte measure from the trade secret proprietor.

The full text of the resolutions, a summary of the group reports and the group reports discussing these aspects of trade secrets for almost 50 countries can be found here.