The counterclaim in trade secret infringement proceedings

In this issue of our “Trade Secret” newsletter, we will focus on a practical problem that arises in the enforcement of trade secret protection. The issue is whether a counterclaim for claims under the Trade Secrets Act (GeschGehG) can be filed in the same court where the action is already pending.

1. Exclusive jurisdiction in trade secret disputes

According to the GeschGehG the respective courts shall have exclusive jurisdiction - irrespective of the amount in dispute. Exclusive local jurisdiction shall have the court in whose district the defendant has his general place of jurisdiction (§ 15 (1) and (2) GeschGehG).

2. Specific jurisdiction for counterclaim

If a defendant wishes to file a counterclaim, § 33 (1) of the Code of Civil Procedure (ZPO) generally provides him with the option of a specific place of jurisdiction. The defendant may file the counterclaim in the court of the initial action: (1) if there is a connection between the counterclaim and the claim being asserted in the action, or (2) if the counterclaim is related to the defenses raised against it therein.

However, according to § 33 (2) ZPO, this shall not apply if, due to a counterclaim having been brought, it is not admissible to agree on the jurisdiction of the court for a complaint pursuant to section 40 (2) ZPO. Pursuant to § 40 (2) sentence 1 no. 2 ZPO, an agreement as to the jurisdiction of the courts is inadmissible, inter alia, if an exclusive jurisdiction has been established for the complaint.

3. Practical problem: Is a counterclaim with claims under the GeschGehG possible?

If a defendant wants to defend himself by filing a claim arising from a trade secret infringement, a counterclaim should generally be considered.

An example of this would be that an employee has disclosed his employer's trade secrets to a third party without authorization. After the employer becomes aware of this, he then terminates the employment relationship. Now, the former employee sues for an outstanding (financial) claim, whereupon the employer wants to raise counterclaims, e.g. a damage claim due to the infringement of trade secrets.

In this case, however, it is questionable whether § 33 (1) ZPO is of any help at all to the employer for the purpose of filing a counterclaim (assuming that the regional courts have jurisdiction). This is due to the provision of an exclusive place of jurisdiction for claims related to trade secret infringements under § 15 (1) and (2) GeschGehG. In the above example only the court where the former employee is residing would have exclusive jurisdiction according to § 15 (2) GeschGehG). On the other hand, § 33 (1) ZPO provides merely a special place of jurisdiction. Thus, the provision of § 15 (2) GeschGehG conflicts with § 33 (1) ZPO. Consequently, § 33 (2) ZPO is relevant. Therefore, the filing of a counterclaim under § 33 (1) ZPO is in principle inadmissible.

Even if it is possible to solve this practical problem on a dogmatic basis, e.g., by a different interpretation of § 33 (2) ZPO, the legislator has presumably taken an opposing position. This can be deduced, since the legislator has not included a provision in § 15 GeschGehG according to which § 33 (2) ZPO is not applicable – comparable to such as in § 29c (3) ZPO.

In practice, however, this sometimes leads to surprisingly coincidental results: For as long as the plaintiff and the defendant live in the same place, a counterclaim is possible at the same court. If they live in different places, the (counter-)claim must be brought before a different court. If the original plaintiff (and then defendant to the counterclaim) wants to file a counterclaim to the counterclaim, this would ultimately only be possible before the court in the defendant's place of residence.

4. Practical advice

On the basis of the above findings, a counterclaim can currently only be brought before the same court with legal certainty if the latter would have local jurisdiction anyway pursuant to § 15 (2) GeschGehG. Conversely, if the plaintiff and the defendant have their general place of jurisdiction in different locations, the defendant should file his own claim in the form of an action at the place of jurisdiction of the original plaintiff (and then the defendant).

Nevertheless, if the defendant files a counterclaim at the court of action without the parties' general places of jurisdiction coinciding by chance, the court will probably separate the counterclaim pursuant to § 145 ZPO. If necessary, it will also refer the legal dispute, provided that the counter plaintiff has filed a corresponding motion for referral.

5. Conclusion

Although this result may be perceived as inequitable if, for example, the counter plaintiff has been the victim of a trade secret infringement, the legislator has not yet taken action. Whether the absence of a corresponding provision in § 15 GeschGehG, such as in § 29c (3) ZPO, is an editorial oversight on the part of the legislator or whether the legislator was aware of the implications of this, remains open for the time being. However, it is clear that currently a counterclaim in the case of trade secret infringements cannot be brought at the place of jurisdiction of the action without further ado.