Today’s blog post is the third, and last, blog post in a series focusing on trade secret law issues and trends. As announced, we will address practical questions and offer insights into how Belgian courts interpret and apply various aspects of the Belgian Trade Secrets Act[1], particularly as it relates to unlawful use, available remedies, and the burden of proof for trade secret misappropriation.
Trend 7: distinguishing between legitimate and unlawful use of a trade secret
To establish a violation of the Trade Secrets Act, it must be proven that the accused party either (1) obtained the trade secret unlawfully, (2) breached a duty of confidentiality, or (3) breached a duty to restrict the use of the trade secret. Keep in mind, however, that the burden of proof lies with the holder of the trade secret.
Belgian case law gives guidance on what constitutes as unlawfully obtained data.
- For instance, the Brussels Enterprise Court ruled that synchronizing mailboxes of ex-colleagues after termination of employment was unlawful.[2]
- Also, when a former employee accesses data from their previous employer with the intent to use it in their new company, this constitutes the unlawful use of a trade secret. Such data is considered to have been obtained unlawfully, as it was accessed outside of any employment relationship and with the intent of improper use.[3] In this case, the Court rules that the former employee had no authority to access this information.
- However, do not be mistaken, even within the context of an ongoing collaboration, access to a trade secret can still be considered unlawful. For instance, the Antwerp Enterprise Court found that a consultant copying files from a server to an external USB stick was acting unlawfully as there was no credible reason for the consultant to be copying a large amount of data.[4]
- The exact moment in time of the alleged misuse is also an important element considered by the Courts. For instance, a director who copied data onto personal hard drives did not violate the relevant provisions under the Trade Secrets Act, as he had authorized access at the time he was copying the data.[5] The Ghent Enterprise Court stated that the mere fact that the company had taken precautions due to the director’s imminent dismissal did not alter the fact there it did not constitute unlawful access.
In this regard, the Ghent Enterprise Court provided useful guidance to distinguish between the legitimate use by a former employee of previously accumulated knowledge and an unlawful use of trade secrets by the same employee. For example, the use of previously accumulated knowledge (including the actual reconstruction of a customer list) and experience is legitimate in itself even if used to compete with a former employer. In contrast, the use of customer lists becomes unlawful when that information is far more comprehensive than the experience one can carry as personal knowledge as a former employee.[6] Therefore, using a customer list for a mass solicitation campaign of 135 customers was deemed unlawful.[7] The court found that the defendants could only have contacted that large number of customers on the basis of the plaintiff’s customer list. Such a solicitation campaign therefore exceeded the personally accumulated knowledge of the employee during the course of employment.
Trend 8: the burden of proof remains heavy
Trade secrets litigation often hinges on the availability and quality of evidence. The burden of proof lies with the holder of the trade secret, who must demonstrate both the existence of the trade secret and its misuse by the adverse party. This proof can be provided through any legal means, including presumptions.[8] The court must be able to assess the nature of the information and verify whether it meets the substantive criteria of a trade secret. The purpose of the burden of proof is to enable the judge to examine the case.
Courts emphasize the need for concrete evidence rather than general assertions.[9] General terms like “customer lists” and “sales data” without specifying the exact nature of these lists and data are often deemed insufficient and do not meet the burden of proof.[10] For example, internal policies within a company prohibiting the transfer of information to private email addresses must be proven; mere statements to this effect are, in any event, insufficient. In addition, if numerous documents or trade secrets are involved, the holder of the trade secret must specify and clearly indicate which elements qualify as trade secrets and how their use by the defendant is unlawful.[11]
Trend 9: evidence gathering via ex parte proceedings
If the information in question is indeed secret, commercially valuable, and reasonable measures were taken to protect it, the holder of the trade secret can start enforcing it, provided it can prove a misuse. However, proving the extent of the misuse of its trade secrets often proves to be challenging in practice.
Trade secrets are strictly speaking not considered intellectual property rights. Therefore, an ex parte counterfeit seizure (beslag inzake namaak / saisie-contrefaçon – article 1369bis/1 Belgian Economic Code of Law) cannot be used to gather evidence in order to substantiate the misuse of the trade secret. An ex parte request for sequestration (sekwester/ Séquestre – article (584, para. 5, 1° or 2° Belgian Judicial Code) can be used instead. A plaintiff may request the summary judge to appoint a sequestrator to seize relevant evidence from the alleged infringer’s premises. The sequestrator’s task is to collect and preserve evidence, which is then analyzed, and reported to the court.
Such proceedings are not a walk in the park.
- the holder of a claimed trade secret seeking ex parte provisional measures must ensure absolute necessity.[12]
- the holder of the trade secretes must clearly define the trade secrets in its request. Therefore, specific evidence must be identified, and it must be made plausible (i.e.: not certain)[13] that the listed items are with the targeted party. A request for sequestration that is too broad or vague may be rejected as it could violate fundamental rights (such as your private life, your home) .[14]
- The holder of the trade secret should precisely outline the expert’s task and identifying the sequestrator by name is advisable.[15]
Even with these precautions, the appointment of a sequestrator is not guaranteed if the holder already has sufficient evidence or if additional measures would be considered a fishing expedition. Indeed, the courts strike a delicate balance between the interests of the trade secret holder and the fundamental rights of the party concerned.
Trend 10: Available remedies remain traditional
Trade secret holders have the possibility of seeking different types of relief measures and remedies for misappropriation. In practice, case law continues to adhere to fairly traditional enforcement measures in trade secrets litigation with a focus on precise identification of protected information and proportionality in the measures granted.
The President of the Enterprise Court in Antwerp granted an injunction to cease the use of trade secrets and an order to destroy files containing trade secrets.[16] Although this measure is often requested and granted, in one singular decision, a court ruled that the order to destroy copied trade secrets lacks effectiveness, as digital data can easily be recopied and the original copy destroyed, therefore questioning its effectiveness.[17]
Important to note is that the court’s decision to grant the requested measures is not binary; the court can grant some measures while denying others. In a case concerning the use of trade secrets to solicit clients, the Antwerp Court had no issue with imposing an injunction to cease the use of trade secrets and an order to destroy files containing trade secrets. However, the Court ruled that the injunction should not extend to prohibiting all contact with the former employer’s clients by the ex-employee, as such an order would be disproportionate and hinder fair competition in the free market.[18]
Conclusion
Understanding the nuances of when the use of a trade secret is unlawful, the burden of proof, and the most effective means of gathering evidence to strengthen your case is crucial for in trade secrets proceedings. The case law demonstrates the importance of concrete evidence and the careful application of sequester measures to ensure the protection of trade secrets while respecting fundamental rights.
For further information or specific legal advice, please contact J.-D. Lindemans, M. Mariano, and E. Van Bogget.
—This blog post is based on the article “Protection of trade secrets before the Belgian courts: overview of case law” by J.-D. Lindemans, M. Mariano, and E. Van Bogget, published in Revue de droit intellectuel – L’ingénieur conseil / Tijdschrift intellectuele eigendom, 2024/3 – 6 December 2024.
[1] Act of July 30, 2018 on the protection of trade secrets, which is a transposition of Directive 2016/943 of June 8, 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
[2] President of the Antwerp Enterprise Court, 3 March 3 2021, NV Martens Hout t. x and NV Byttebier Hout, Jaarboek Markpraktijken 2021, vol. 1, 274.
[3] President of the Ghent Enterprise Court, 10 June 2020, A/20/00248, unpub., 9.
[4]Antwerp Enterprise Court 9 May 2019, Govaerts Recycling, unpub.
[5] Ghent Enterprise Court (Ghent division), 13 August 2020, A/19/03389, unpub.
[6] President of Ghent Enterprise Court, 13 March 2019, A/19/00515, unpub.
[7] Ghent Enterprise Court (Ghent division), 13 March 13 2019, A/19/00515, unpub.
[8] Enterprise Court Brussels 29 July 2020, Ar A/19/04032, unpub.
[9] Enterprise Court. Ghent 21 December 2022 AR A/21/00341, unpub; Pres. Enterprise Court Antwerp (section Antwerp), 29 December 2021, unpub.
[10] Pres. Enterprise Court Ghent (section Ghent), 2 November 2022, A.R. A/21/02722, unpub.
[11] Enterprise Court Antwerp (section Antwerp), 17 March 2022, BV CoreTalents t. CV We and Work, unpub.
[12] Court of Appeal Brussels, 11 March 2021, 2020/AR/1367, unpub., 11
[13] Court of First Instance West-Flanders (section Kortrijk), 19 October 2021, TBH 2022, vol. 4, 531.
[14] Ghent Labor Court of Appeal, 21 September 2020, RABG 2022, vol. 4, 336-344.
[15] Ghent Labor Court of Appeal, 21 September 2020, RABG 2022, vol. 4, 336-344.
[16] Pres. Enterprise Court Antwerp (section Antwerp), 3 March 2021, NV Martens Hout t. x en NV Byttebier Hout, Jaarboek Marktpraktijken 2021, vol. 1, 276.
[17] Enterprise Court Antwerp. Antwerpen 9 May 2019, TBH, 2020, 383.
[18] Pres. Enterprise Court Antwerp (section Antwerp), 3 March 2021, NV Martens Hout t. x en NV Byttebier Hout, Jaarboek Marktpraktijken 2021, vol. 1, 276.