Better safe than sorry - On the reasonableness of secrecy measures

As part of our newsletter series on the topic of "trade secrets", we would like to follow up on our article of June 15, 2022. This article already dealt in detail with the question of when secrecy measures under the German Trade Secrets Acts (GeschGehG) are reasonable. As far as can be seen, this question has now been addressed for the first time by the Federal Court of Justice (BGH) in a recently published decision (Hinweisbeschluss) dated (already) December 16, 2021 (Case No.: I ZR 186/20 (OLG Hamm, LG Münster) = MMR 2022, 773).

Practical problem: When are secrecy measures reasonable?

In its decision of September 15, 2020 (Case No.: 4 U 177/19 (LG Münster) = MMR 2021, 506), the Higher Regional Court (OLG) of Hamm had already ruled in the previous instance that the concept of reasonable secrecy measures within the meaning of Section 2 No. 1b of the German Trade Secrets Act (GeschGehG) is a flexible and open requirement that follows the principle of proportionality. Reasonableness does not require optimum protection, because otherwise the definition of trade secrets would be too severely restricted. Companies are not required to take the best possible and most secure measures under the circumstances to protect their trade secrets. Conversely, the cost-saving adoption of only a minimum of protective measures is not sufficient. Overall, the reasonableness depends on the specific circumstances of the individual case, so that a relative and dynamic rather than an absolute standard must be applied.

In concrete terms, this means that the secrecy measures taken by a company do not have to be insurmountable as long as they were reasonable from an objective point of view and the company concerned had no reason to believe that the measures taken were insufficient. However, if the specific secrecy measures taken had already been circumvented several times in the past without the company having reacted appropriately despite clear indications for such circumventions, the measures taken are to be considered unreasonable.

This has now been confirmed by the Federal Court of Justice in its above-mentioned decision. It is to the plaintiff’s detriment, having the burden of proof in this respect, if secrecy measures were circumvented. If it is no longer possible to clarify in retrospect when exactly secrecy measures were already circumvented in the past, it must be assumed in case of doubt that they were already circumvented before the misappropriation in question.

Practical tip

The decision once again highlights the importance of taking reasonable secrecy measures. It gets clear from the decision that companies need to take the protection of their trade secrets very serious. In addition, companies should make sure that the respective secrecy measures do not only exist on paper, but are also “lived” in daily practice. Above all, companies should document their respective efforts, for example, by recording training sessions on the handling of trade secrets, making them mandatory for all employees and having their attendance and knowledge of the respective guidelines and policies confirmed in writing. Even though the measures may be varied and must be individually adapted by each company, one thing remains the same: All companies should take preventive measures enabling them to document and prove their respective efforts - if needed.

Conclusion

The decision may come as a surprise at first glance. At second glance, however, it becomes clear that it is merely based on the general principle that the plaintiff bears the burden of proof for all facts giving rise to the claim. Consequently, if a company is unable to demonstrate and prove to the satisfaction of the court that it took reasonable secrecy measures at the time the trade secret was misappropriated, it cannot take advantage of the statutory protection of the GeschGehG.