Secrecy Order vs. Interim Injunction Order?

#Trade Secrets #Art. 9 Trade Secrets Directive #interim injunction #Protection of trade secrets via interim injunction proceedings

In addition to an out-of-court warning, in practice the infringed person will often have an interest in prohibiting the infringer from appropriating, using and disclosing its trade secrets to third parties as quickly and effectively as possible. For this purpose, it is advisable to obtain an interim injunction against the infringer in summary proceedings pursuant to Sections 935, 940 Code of Civil Procedure (ZPO). In addition, the infringed person should also file a request for confidentiality of the trade secrets submitted in the proceedings. Otherwise there is a high risk that they are no longer regarded as being kept secret following their submission to the court (cf. our article of June 15, 2022 on reasonable secrecy measures).

Service of the order takes place at instigation of the parties

If the infringed person has successfully applied for an interim injunction, the competent court will first decide on the request for confidentiality by way of an order and then issue an interim injunction against the infringer. In both cases (ex parte orders and judgment) however, the effective service of the order is the responsibility of the infringed person. The reason is that, in case of a judgment, service is initially made ex officio on both parties. However, this service does not constitute execution within the meaning of Section 929 para. 2 ZPO, so that a further service of the judgment at the instigation of the infringed person on the infringer is necessary. Only with the service at the instigation of the infringed person the order finally becomes effective and at the same time executed according to Section 929 para. 2 ZPO.

Practical problem: If this is successful, two separate orders exist

However, if the interim injunction is decided by way of an order (and not a formal judgement), a practical problem now arises: There are two separate orders, a secrecy order and an injunction order. Both orders must be served on the infringer by different means: The injunction order at the instigation of the parties, the secrecy order e contrario ex officio pursuant to Sections 922, 936 ZPO in conjunction with Sections 191 ff. ZPO. In practice, the infringed person will want to avoid the situation where the injunction including its annexes with the trade secrets reaches the infringer before the secrecy order is served on him. The other way around, a secrecy order that is served on the infringer first would practically come out of the "blue", since the latter is often not aware of the injunction sought against him. Therefore, from a practical point of view, it is highly recommendable to have the two orders being served at the same time. However, this sounds more simple than it is in practice. On the one hand, it cannot be predicted with certainty when a secrecy order served ex officio will be precisely received by the infringer. On the other hand, the infringed person does not have direct control over when the bailiff, who is responsible for service, serves the order.

Practical tip: (Initial) service of both orders at the instigation of the infringed person

The legislator obviously overlooked this practical problem when introducing the GeschGehG. If an ex parte order is issued in practice, there is currently a regulatory gap. If the infringed person wants to make sure that the two orders are served on the infringer at the same time, he should therefore act quickly. It seems recommendable that the infringed person – in a first step – briefly discusses the matter with the competent court and then also serves the secrecy order at his instigation. Following this, a written notification of service should be made to the competent court, combined with a formal request for the secrecy order to be served again ex officio.

Conclusion

The practical problem described above makes it clear that the current provisions of the German Trade Secrets Act pose practical challenges for legal experts. However, it cannot be predicted whether the existing regulatory gaps will be closed in the near future, or whether at least a consolidated case law will be established in this regard. In the meantime, it seems recommendable to proceed as described under item 4 above.