Sections 17 to 19 of the Unfair Competition Act (UWG), in which the right to business and trade secrets was previously regulated with regard to the legal situation under the UWG, have since ceased to apply. The GeschGehG does not provide for any transitional periods or regulations. In this article we deal with the fate of the injunction claim. In further articles we will deal with claims for information and damages as well as criminal law assessment. The topic is complex and the contribution can therefore only provide initial suggestions and cannot replace a scientific analysis.
Initial situation
An infringement of trade secrets pursuant to Sect. 17 UWG has so far led to a claim for removal or injunctive relief based on Sect. 3, 8 UWG or general civil law provisions. In addition, claims for information and damages arose. The fate of these claims is unregulated after the entry into force of the GeschGehG.
The injunctive relief claim extends to the future. For the future, it cannot expire through performance, but only through the elimination of its legal basis, i.e. by changing the facts that justified the injunctive relief claim in the first place. According to both old and new law, the essential prerequisite for a claim for injunctive relief is the existence of a danger of recurring infringement or at least of first infringement.
However, the terms “danger of recurring infringement” and “danger of first infringement” as such are meaningless. Their object of reference, i.e. the violation of the trade secret, is decisive.
Violation of trade secrets, on the other hand, is partly defined differently in Sect. 4 GeschGehG than in Sect. 17 UWG. For example, Sect. 4 (1) nos. 1, 2 GeschGehG prohibits the acquisition of a trade secret if it is based on other conduct which, according to the respective circumstances, does not correspond to the principle of good faith taking into account honest market practices. This fact of acquisition is more comprehensive than the former Sect. 17 (2) no. 1 UWG, which only provided for a prohibition for the acquisition by a) application of technical means, b) production of an embodied reproduction and c) removal of an object in which the secret is embodied. Furthermore, pursuant to Sect. 4 (2) no. 2 GeschGehG, the infringement of a contractual restriction on the use of a trade secret that has come to knowledge in a permissible manner has now also been elevated to the rank of a trade secret infringement. Violation of such a restriction of use is also punishable if the trade secret is a secret document or regulation of a technical nature with which the infringer has been entrusted.
Differences also result from differences in the definition of business secrets in Sect. 2 no. 1 GeschGehG itself. In this context, the most important measures to be mentioned are the reasonable steps to keep the information secret, which have recently become necessary under the law and which have been the subject of heated discussion for some time. Also in further details, which do not play a decisive role here, the definition of Sect. 2 No. 1 GeschGehG is not completely identical with the definition of trade secrets developed by the Federal Supreme Court in its settled case-law.
No general amnesty for old cases
The expiry of Sect. 17 to 19 UWG does not have the effect of a general amnesty for old cases. It can be inferred from the legislative materials that the protection provided by Sect. 17 to 19 UWG should in principle not be shaken, but that the provisions of the Trade Secrets Directive (EU) 2016/943 necessitated a supplementary implementation of the provisions under civil law. Against the background of the continuity expressed therein, there are no objections against the application of the civil law provisions of the GeschGehG to old cases.
Relevant assessment date
The wording of the operative part of an order for injunctive relief depends on the factual and legal situation at the time of the last oral hearing at the court instance that hears the case on the facts. From this it can be derived as a general rule that the injunction claim must now also be measured against Sect. 6 GeschGehG for old cases. This presupposes that an infringement of a right within the meaning of the GeschGehG is threatened for the first time or repeatedly. Whether an infringement of a right exists or not is again to be assessed according to Sect. 4 GeschGehG, which refers to business secrets defined in Sect. 2 no. 1 GeschGehG. For reasons of protection of legitimate expectations, the application of Sect. 6 GeschGehG is subject to a limit where conduct not to be regarded as a trade secret infringement under the old law would now be prohibited. This concerns, for example, the above-mentioned scenarios of Sect. 4 (2) no. 2 GeschGehG, i.e. the violation of a contractual restriction of use. The assessment is a different one if, due to a new act of the infringer after 26 April 2019, the requirements of Sect. 4, 2 no. 1 GeschGehG have now been met for the first time. Possible cases are, for example, those in which the perpetrator or a bad faith third party uses the trade secret for another infringing product under (repeated) breach of a contractual restriction of use pursuant to Sect. 4 (3) GeschGehG.
It results from this: The ordering of injunctive relief in old cases presupposes that the asserted trade secret meets the now existing requirements of Sect. 2 no. 1 GeschGehG at the time relevant for the decision. Thus, at the end of the oral proceedings, the trade secret must be an information which is not generally known within the circles that normally deal with this kind of information and which is of commercial value due to its secret nature. The information must also be subject to appropriate secrecy measures and there must be a legitimate interest in secrecy. The details of these conditions will be discussed in more detail in future contributions.
Danger of recurring infringement or danger of first infringement
If these prerequisites of Sect. 4, 2 GeschGehG already existed at the time of the offence, a risk of repetition within the meaning of Sect. 6 GeschGehG may be assumed despite the reorganisation of the statutory provisions.
The matter becomes more complicated if the infringing act at the time of the offence constituted a violation pursuant to the obsolete Sect. 17 UWG, the now valid requirements of Sect. 4, 2 GeschGehG had not yet been met, but these have been created in the meantime. This case scenario should become extremely relevant in practice. In particular, it covers all cases in which companies have (only) implemented appropriate secrecy measures after the infringement case, taking into account the legal change that is looming or has entered into force. In addition, there are cases in which the aggrieved company cannot prove the implementation of appropriate confidentiality measures for the time of the old case, e.g. due to inadequate documentation.
In this case scenario, it appears appropriate to assume continuity of the danger of recurring infringement and of first infringement, irrespective of the change in the definition of a trade secret, if – which will be the rule – the infringing act as such is also prohibited under Sect. 4 GeschGehG. On the one hand, this is generally supported by the fact that the GeschGehG was not intended to fundamentally reorganise the law on the protection of trade secrets, but rather to adapt it to the requirements of the Directive. On the other hand, the maintenance of trade secret protection by reviewing and adapting the necessary protective measures does not constitute a caesura which would justify a reassessment of the danger of recurrence or first infringement. The injunctive relief of Sect. 6 GeschGehG is generally directed against the infringer. It does not differentiate either according to the variants of Sect. 4 GeschGehG or according to the concrete reasons why a person is considered to be an infringer. Therefore, in cases which are to be regarded as acts of infringement under both the old and the new law, there is no reason to raise again the question of the danger of repetition and/or first infringement. Otherwise, the legitimate interests of the owner of the secret would not be adequately taken into account in the case of an infringement committed prior to the entry into force of the GeschGehG.
Similar difficulties arise in cases in which conduct that is inadmissible under Sect. 17 to 19 UWG appears permissible due to the change in the law but unrelated to the changed definition of a trade secret. One example is cases in which the infringer obtained a trade secret before the GeschGehG came into force with the help of reverse engineering, which was predominantly regarded as inadmissible in Germany. Reverse engineering is now generally permissible under Sect. 3 (1) no. 2 GeschGehG. It is obvious that the acquisition of a trade secret can no longer be prohibited under these circumstances, i.e. that the injunctive relief related thereto has ceased to exist. The admissibility of the use and disclosure of the formerly illegally attained secret is a completely different question.
The GeschGehG does not contain any provision according to which a trade secret obtained by reverse engineering may be used and disclosed. According to Sect. 3 (2) GeschGehG, use and disclosure are only permitted if this is permitted by law, on the basis of a law or by a legal transaction. It is not as clear whether a right of use and disclosure can arise in addition, in particular by the fact that the person obtaining the trade secret by means of reverse engineering also becomes the owner alongside the original owner of the secret. This point also needs to be examined separately.
In any case, the GeschGehG does not provide any indication that the person who came into possession of the trade secret through inadmissible reverse engineering under the application of Sect. 17 to 19 UWG is now to be regarded as the legitimate owner of the trade secret. Which rights could flow from such an owner position nowadays is therefore not decisive for the purposes of this consideration.
Bottom line
Claims for injunctive relief on the grounds of infringement of trade secrets that came into existence pursuant to Sect. 17 to 19 UWG continue to exist insofar as the requirements for protection under the GeschGehG are met and the act of infringement concerned is still prohibited. A danger of recurring or first infringement is not generally set aside by the change in law.
