The decision is based on the following facts:
The applicant develops and manufactures special fibre spinning systems which it uses exclusively for its own production of hollow fibres for dialysis filters. At the heart of the spinning lines are the nozzle blocks on which the nozzles for fibre production are mounted. The applicant’s spinning lines originally had a capacity of 1024 threads and, since 1999, a capacity of 1536 threads. Defendant 1 manufactures and distributes fibre spinning lines for the production of hollow fibres for dialysis filters. The defendant zu 2 is the managing director of the defendant zu 1 and a chemist specializing in the production of hollow fibers. Before joining Defendant 1, he was employed by the plaintiff as production manager. The defendant to 1 offers for the first time since 2004 a spinning plant with 1536 threads. The plaintiff asserts that the defendants inadmissibly copied hollow fiber spinning plants with 1024 and 1536 threads using construction drawings, plans and other information provided by the plaintiff, and sees in this, among other things, an illegal exploitation of their trade secrets.
The Regional Court upheld the action and prohibited the defendant from manufacturing and distributing the fibre spinning equipment and ordered it to provide information.
The Court of Appeal amended the judgment of the first instance and dismissed the action on the ground that the plaintiff had not submitted sufficient evidence of either a trade secret or an infringing act within the meaning of Section 17 UWG. The plaintiff did not specifically state which part or element of its installations constituted a trade secret. Nor had it explained which construction plan of the spinning plants, in which individual part or area if any, contained a trade secret. Furthermore, the plaintiff had not shown that the defendant had made unauthorised use of knowledge obtained from the plaintiff. The mere fact that the parties’ annexes had similarities does not permit such a conclusion.
The BGH annuls the decision and refers the case back to the Court of Appeal for a new decision:
a) The BGH states that it is sufficient for the determination of the petition for an action if – as in the case at issue – the prohibition sought by the plaintiff is directed against a specific form of infringement. A verbal description of the circumstances from which the plaintiff derives an infringement is not necessary in this case. In this respect, it had to be taken into account that the principle of certainty must not result in the plaintiff being forced to disclose business or trade secrets in the petition for action, ignoring his legitimate secrecy interests.
b) The BGH further states that the concrete dimensions and arrangements of the nozzle bodies and nozzle blocks of a hollow fibre membrane spinning plant embodied in the design plans and in the end product itself can be considered as violated or unlawfully exploited trade secrets. In the event of a dispute, the plaintiff’s evidence was submitted in the form of an expert opinion. The plaintiff made its result and the favourable findings of the Regional Court his own. The BGH clarifies that a further specification of the details by which the trade secret is embodied has no significance for the merits of the application aimed at prohibiting the concrete form of infringement. This was only relevant for the scope of the prohibition tenor, i.e. the question as to whether similar acts of infringement were also covered by the cease and desist order.
c) With regard to protection as a trade secret, the Federal Court of Justice explains that this is not opposed by the fact that a fact is accessible to a limited group of persons, albeit possibly a larger one. It was also irrelevant whether an employee was aware of the relevant circumstances. The secret character of a fact is not regularly neutralised by the fact that processes in a production plant become known to the employees there. Protection as a trade secret was only excluded if it was obvious, i.e. if the fact was generally known. The assignment of a fact to the state of the art was of no significance for the question of disclosure.
Rather, protection as a trade secret depends on whether the relevant fact can only be found, made accessible and thus usable by the entrepreneur with a great deal of time or expense. This applied in particular to construction plans in which the dimensions and arrangements of technical components of a machine were embodied. By using them, a considerable amount of the company’s own design work is regularly saved.
d) With regard to the question of the infringing act, the Federal Court of Justice first points out that a retired employee may use the knowledge acquired during the period of employment without restriction at a later date, provided that he is not subject to a non-competition clause.
However, this only applied to information which the former employee kept in his memory. The entitlement, however, did not refer to information which the retired employee was only aware of because he could fall back on written documents which he had prepared during the period of employment. A departing employee was therefore not entitled to refresh the knowledge he had acquired by taking away or stealing design documents and to use the know-how embodied in these documents for his own purposes. If such documents were available to the retired employee and if he took from them a business or trade secret of his former employer, he obtained this secret without authority within the meaning of § 17 para. 2 no. 2 UWG. Such a flaw does not lose its significance under competition law simply because the employee is in a position to develop such equipment or parts of equipment himself.
For the question as to whether an unauthorised exploitation had been presented in the present dispute, the BGH refers to the findings of the Regional Court. In view of the large number of similarities in the spinning systems at issue and in particular in the layouts and individual dimensions of the respective nozzle blocks, the court had found that a subsequent takeover without the use of construction drawings, specifications, photos or detailed sketches appeared to be ruled out.
Note:
In fact, this dispute has the specific feature that the applicant’s trade secrets relate to a technique which the applicant uses exclusively within its own company and which it does not disclose to third parties. This was the basis for the assumption that the concrete construction enjoys protection as a trade secret of the plaintiff. The complexity of the construction in detail and the degree of conformity of the spinning plants at issue allowed the court to conclude that they had been used improperly.
From a legal point of view, the BGH has continued its previous case law in particular on the secret character of a fact which is known to the employees of a company and/or belongs to the state of the art and is therefore regularly known through publication, and on the inadmissible exploitation of trade secrets by employees who have left the company (see BGH, BGH, judgement v. 23.02.2012, I ZR 136/10 – MOVICOL application for approval, GRUR 2012, 1048, 1049; judgement v. v. 13.12.2007, I ZR 71/05 – welding module generator, GRUR 2007, 727, 728 f.; judgement of 07.11.2002, I ZR 64/00 – precision measuring instruments, GRUR 2003, 356, 358).
It is also not surprising that the BGH, with reference to the type of infringement referred to in the application, considers a more detailed description of the circumstances from which the infringement arises to be unnecessary. It should be emphasised, however, that in connection with the certainty of the claim, the BGH emphasises the plaintiff’s interest in the secrecy of its business and trade secrets and takes this into account (BGH, judgment v. v. 22.03.2018, I ZR 118/16 – Hollow fibre membrane spinning plant II, marginal 19). In less clearly defined cases, this opens up a certain scope for design and argumentation.
It is to be expected that the case law will also transfer the principles of the protection of business and company secrets set out once again in the present decision to the new law on the protection of business secrets, which will be introduced by the Law on the Protection of Business Secrets (GeschGehG) in implementation of Directive (EU) 2016/943 of 8 June 2016 (Directive (EU) 2016/943). Although the new law will place higher demands on the presentation of the secret character, i.e. it will additionally require the presentation of appropriate secrecy measures according to the circumstances (§ 2 No. 1 lit. b) of the government draft of the GeschGehG of 18.07.2018 (RegE GeschGehG); Art. 2 No. 1 lit. c) RL (EU) 2016/943). However, higher requirements for the secret character of facts themselves are not to be expected. Thus § 2 No. 1 lit. a) RegE GeschGehG and Art. 2 No. 1 lit. a) RL (EU) 2016/943 provide that information constitutes a trade secret if it is not generally known or readily accessible and therefore of economic value. This corresponds to the assessment of the case law of the Federal Court of Justice that it depends on whether the relevant fact can only be found, made accessible and thus usable by the entrepreneur with a great expenditure of time or money.
