Protection of trade secrets against unlawful acquisition, use and disclosure under European and Romanian Law

DD & IP Protection Tips for Romanian Companies

This article is an abstract of the presentation presented by Professor Gheorghe Piperea on the 30^th of March 2023 at the seminar organized by the Romanian Chamber of Commerce and Industry (CCIR), together with the Africa IP SME Helpdesk, organized the Doing business in North Africa.

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Of all the important topics in the field of intellectual property (inventions, trademarks, industrial designs, copyright), we have chosen to address the thorny issue of trade secrets.

Such valuable know-how and business information, that is undisclosed and intended to remain confidential, is generally referred to as a trade secrets.

Trade secrets are valued as highly as any other form of intellectual property, particularly by small and medium-sized enterprises (SMEs), especially as innovative businesses are increasingly exposed to dishonest practices involving the misappropriation of such secrets.

Thus, to prevent unfair practices, we need to consider that trade secrets are not protected by law per se like any other subjective right of an individual or a company. Trade secrets do not imply a direct relationship between their holder and the trade secret, as the latter is not an intangible form of ownership.

In this regard, the trade secret holder needs to control the possession over the trade secret, i.e. to take reasonable and diligent measures in order to preserve the confidentiality of the trade secret – inter alia to limit employee access to secret equipment, instruct employees not to disclose information, use confidentiality clauses in the individual labour contract, use non-disclosure clauses, secure the location, the factory or the information system where the secret is held, refrain from disclosing the secrets to the client or authorities etc.

In relation to these issues, a `DD tip` would imply that the parties involved in a takeover focus on an analysis of these agreements passed by the company subject to the transaction to fully ensure that the trade secret holder i.e. the seller has taken duly measures to preserve confidentiality.

As a conclusion, the opposability of the legal protection of the trade secret has typical features of indirect protection, specific to a simple `factual power` over the respective trade secret.

A ‘Protection tip’ would imply an analysis of the Directive and GEO no. 25/2019 as follows, as well as of the Law no. 11/1991 and the Civil Code.

Finally, there are various measures and remedies to protect trade secrets, as follows:

1. The trade secret holder (complainant) must bring the action to court within the limitation period of 6 years as of the date on which the complainant knew or ought to have been aware of the unlawful acquisition, use or disclosure of the trade secret by the infringer. The trade secret holder must address his summons to the county court (tribunal).

2. The trade secret holder is entitled to fast, effective, and accessible provisional measures for the immediate termination of the unlawful acquisition, use or disclosure of a trade secret, including where it is used for the provision of services.

3. Other measures subsequently to examining the merits of the case are made available by the law and consist in a) the cessation or, where appropriate, the prohibition of the use or disclosure of the trade secret; b) the prohibition to manufacture, offer, place on the market or use goods that contravene the rules or to import, export or store such goods for these purposes; c) taking corrective action to remove the illicit characteristics of the goods contrary to the rules. Any claim based on GEO no. 25/2019 must be filed in accordance with the legal provisions set forth by the Civil Code.

A claim based on the legislation of unfair competition may be used for the misappropriation of customers (according to art. 2 para. (1) lit. b of Law no. 11/1991) or for any other commercial practices that contravene honest usages and the general principle of good faith and that caused or may cause damage to competitors (according to art. 2 para. (1) lit. d of Law no. 11/1991)