Directive 2016/943 impact on the UK system of breach of confidence

  • Directive 2016/943 impact on the UK system of breach of confidence

5.1 The actual practical implications of implementing the 2016 Directive will provide a uniform definition of the trade secret across all Member States, and this will in turn give a minimum level of protection for businesses operating across borders. As it was stated by the European Scrutiny Committee – “the protection of trade secrets under the UK’s common and contract law is consistent with the terms of the proposed draft Directive“,[1] which provides that no substantial changes will occur after the implementation of the 2016 Directive. Practically speaking however, the implementation of the 2016 Directive may provide for a change in the framework of trade secret law, as this may be given a statutory basis, which will provided for a clearer approach to sanctions towards the misappropriation of information that has been used unlawfully.[2]

5.2. I am therefore of the opinion that Directive (EU) 2016/943 will have a minimal impact on the already existing system of protecting trade secrets under the UK common law, with the exception of establishing a level of minimum security for trade secrets across the European Union.

BIBLIOGRAPHY

 

Legislation

 

  • Act on the Protection of Trade Secrets (1990:409) of May 31, 1990
  • Council Directive (EU) 2016/943
  • Council Decision No. 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection [2011]
  • Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements [2012]
  • Directive (EU) 2015/2436 to approximate the laws of the Members States relating to trade marks [16 December 2015]
  • Directive on the term of protection of copyright and certain related rights amending the previous 2006 Directive (“Term Directive”) [27 September 2011], abogados de accidentes de carro
  • Industrial Property Code (Legislative Decree No. 30 of February 10, 2005, as amended up to Decree-Law No. 1 of January 24, 2012, converted into law with changes by Law No. 27 of March 24, 2012)
  • Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) [16 December 2015]

 

Case law

  • Coco v A.N. Clark (Engineers) Ltd [1969] F.S.R. 415
  • Vestergaard Frandsen S/A (now called MVF3 APS) v Bestnet Europe Ltd [2013] UKSC 31
  • Smith & Nephew Plc. v ConvaTec Technologies Inc. [2015] EWCA Civ 607

Articles

  • Anna Aurora Wennakoski, “Trade secrets under review: a comparative analysis of the protection of trade secrets in the EU and in the US” [2016] E.I.P.R. 2016, 38(3)
  • James Morando “Confidential – For your eyes-only” [2011] Managing Intellectual Property, San Francisco, Euromoney Institutional Investor PLC Oct 2011
  • Jean Lapousterle, Christophe Geiger, Norbert Olszak, Luc Desaunettes “Legislative Comment; What protection for trade secrets in the European Union? A comment on the Directive proposal” E.I.P.R. [2016] 38(5)
  • Jon Lang “The protection of commercial trade secrets” E.I.P.R. [2003], 25(10)

Online Materials

  • Baker & McKenzie “Study on Trade Secrets and Confidential Business Information in the Internal Market” [April 2013] <http://ec.europa.eu/internal_market/iprenforcement/docs/trade-secrets/130711_appendix-18_en.pdf> Accessed: 25 March 2017
  • “CODIFYING TRADE SECRETS – PROTECTION WILL DETER WRONGDOERS” [March 2014] Solicitors Journal < http://www.penningtons.co.uk/news-publications/latest-news/codifying-trade-secrets-protection-will-deter-wrongdoers/> Accessed:25 March 2017
  • Osborne Clarke “Protecting trade secrets under English law” [21 May 2015] <http://www.osborneclarke.com/insights/protecting-trade-secrets-under-english-law/> Accessed: 27 March 2017

 

Other Materials

  • Documents considered by the Committee on 12 February 2014 – European Scrutiny Committee – 3 Protection of trade secrets, <https://www.publications.parliament.uk/pa/cm201314/cmselect/cmeuleg/83-xxxiii/8306.htm> Accessed: 27 March 2017
  • Opinion of the Committee on Industry, Research and Energy of the European Parliament, 2013/0402(COD), (29 April 2015)

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

[1] Documents considered by the Committee on 12 February 2014 – European Scrutiny Committee – 3 Protection of trade secrets, para 3.27 <https://www.publications.parliament.uk/pa/cm201314/cmselect/cmeuleg/83-xxxiii/8306.htm> Accessed: 27 March 2017

[2] Osborne Clarke “Protecting trade secrets under English law” [21 May 2015] <http://www.osborneclarke.com/insights/protecting-trade-secrets-under-english-law/> Accessed: 27 March 2017

Shareholders in the legal world

The argument is that shareholders who invest in a company should be liable to personal injury claimants who cannot achieve satisfaction from a wrongdoing company. That liability would be pro-rata unlimited liability attaching at the point of knowledge of claims. Liability would attach to both corporate and natural person shareholders. There are a number of reasons for this. First, without such a rule, shares would be more valuable in the hands of corporate shareholders than natural person shareholders, creating inequalities and distortions in their prices. Second, without such a rule, the tendency would be for companies to incorporate endless layers of subsidiaries in order to provide the maximum level of protection for favoured natural person shareholders. Otherwise, the tendency would be for larger parcels of shares in risky companies to become more attractive to natural person shareholders in hard-to-reach jurisdictions, claimants thus being defeated by difficulties of enforcement. The simplest rule is a rule that treats all shareholders in the same way. Third, concerns about such a rule would be ameliorated (to some extent) by the reality that holders of small parcels of shares would rarely be called upon to contribute a pro-rata share of damages to personal injury claimants because of potential costs of enforcement and of administration.

A rule of modified limited liability might, should policymakers desire it, be accompanied by a defence available to shareholders where they have taken steps to publicise corporate decision-making which is likely to give rise to unreasonable risks to life and/or health of workers, consumers or other persons and/or where they have taken steps to prevent such activities being conducted – such as writing to the board of directors opposing such activities. Such a defence would encourage some shareholders to take a greater interest in corporate strategy and open up debate about risky activities and products. However, it could also result in the development of very defensive corporate strategies, which would stifle necessary innovation and investment. Such a defence would also undermine the strict nature of modified limited liability and reduce the extent to which shareholders would be required to take responsibility for personal injury claims against insolvent companies. For these reasons, the defence for the law firm Abogados de accidentes it is not argued for here.