JONES DAY PRESENTS®: Trade Secret Enforcement in Spain
Spain's Trade Secrets Law, enacted in early 2019, is expected to bring about significant changes to the country's business environment. Partner Marta Delgado Echevarría talks about the new protections in place for trade secret owners and the remedies available to parties falling victim to trade secret violations.
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Read a full transcript below:
Now we've got a new law. It was enacted at the beginning of 2019. It's the Trade Secrets Law. And I think that's going to change the environment, absolutely. The business environment is going to take things more seriously. They're going to know how to protect it. They're going to have really very clear tools to go to court, to ask for preliminary measures, investigation measures, ways to gather evidence as well, and they also know what they can claim in terms of the cease of the misuse of the trade secret, but also in terms of the damages because the law is very clear about the types of damages that can be claimed including moral damages which is not something that in Spain companies typically apply for.
So now the roadmap is much clear for everything. For the businesses, also for the judges, and also the potential infringers. And now it's equated to copyright, trademark, patents in terms of the protection level. So I think in one to five years, the general environment is going to be much more prone to trade secret protection. There are tools which we didn't have before in our procedural law, thanks to this new Trade Secret Law, which provide for protection of confidential information in terms of who can access the premises, the court, when a hearing is taking place, or who can access the documents of the claim.
So I think it will be easier to keep away those kinds of concerns, but still gathering evidence is very tricky in Spain. Although I see there will be a more easy landscape because of the preliminary measures and evidence seeking measures that the law contemplates now. In terms of the trends, I see more companies suing for trade secret protection. And now we will have as a consequence of this law, two different ways to protect trade secrets. First of all, through the Trade Secrets Law, but also through the Unfair Competition Law because this is how it has been usually protected.
We didn't have a Trade Secret Law. We had an Unfair Competition Law which provided in one of the articles of the law, a protection to trade secrets as well as a protection to many other things. That is still ongoing, that is still enforced. So we will be able to go to the two of them to the Trade Secrets Law, as well as to the Unfair Competition Law in order to protect the trade secrets. This is a third one, very often trade secrets and antitrust collide or go together in the sense that the Antitrust Law in Spain has an article which is a little unprecedented in other jurisdiction.
It is an article that provides that behaviors, that amount of unfair competition can be antitrust. So they can be an antitrust offense when they affect the public interest. And so because trade secrets are protected under the Unfair Competition Law as well, now it turns that trade secrets can be protected by the competition law also by Antitrust Law as well. And so as a result, not only private courts, or civil courts will be competent to hear those cases, but also the Competition Authority. So administrative authority will be able to pursue those cases through an administrative investigation.
The remedies are the classic remedies that you would get for any trademark, copyright, patent right. So they involve the cease of the use of that trade secret, involve the remotion of the effects, so turn around of the effects of that use. A compensation to the owner, not only for economic damages, but also moral damages, and then the publication of the judgment potentially also on newspapers in a regional area or in the whole of Spain.
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