Remedies for infringement
Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).
Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).
Argentine law provides civil and criminal law remedies for cases of trade secret infringement.
Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.
Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.
Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.
Remedies for a breach of confidentiality in trade secrets include the equitable remedies of injunctions, imposition of a constructive trust, delivery-up of documents, equitable damages or compensation and an account of profits, in addition to usual remedies for breach of contract where relevant.
In determining the severity of the remedy, the court may take into account the advantage given to the defendant when they acquired and exploited the plaintiff's trade secrets.
Civil remedies include:
Criminal remedies include:
Certain measures ensure that trade secrets are not exposed during (civil) court proceedings, including not to the opposing party. This includes the possibility to only disclose minimum information necessary to substantiate a claim or have a court appointed expert witness report to the court about the trade secret without revealing confidential information.
If it is imperative to guarantee a fair trial the court may, however, order the disclosure of a trade secret.
Actions for misappropriation can be brought in criminal and civil proceedings, on the one hand, and in contractual liability and liability ex delicto on the other hand. In principle, both (interim and final) injunctive and monetary relief can be obtained.
The implementation of Directive 2016/943 in Title 8/1 of Book XI CEL ensures that the competent judicial authorities may, at the request of the trade secret holder, order a number of provisional and precautionary measures against the alleged infringer, such as the cessation of or the prohibition of the use or disclosure of the trade secret on a provisional basis; and/or the prohibition of the production, offering, placing on the market or use of infringing goods, or the importation, export or storage of infringing goods for those purposes; and/or the seizure or delivery up of the suspected infringing goods, including imported goods, so as to prevent their entry into, or circulation on, the market; or, as an alternative to the aforementioned measures, make the continuation of the alleged unlawful use of a trade secret subject to the lodging of guarantees intended to ensure the compensation of the trade secret holder. In addition, in a court proceedings on the merits of the case, a series of injunctive and corrective measures can be sought, as well as damages and dissemination of the information concerning the decision.
Remedies available for infringement of trade secrets can include criminal remedies (ie, imprisonment and a monetary fine) and civil remedies (ie, injunction to prevent the continuation of infringements and damages).
A party can seek remedies for breach of contract, or breach of confidence at common law. The tort of intentional interference with economic relations may also be available or breach of fiduciary duty.
Remedies can include an injunction for actual or threatened misappropriation, delivery up or destruction of materials made as a result of using confidential information, imposition of a constructive trust over property acquired through misuse of confidential information, damages (including actual loss and unjust enrichment caused by the misappropriation) or an accounting of profits. Imposition of reasonable royalties instead of injunction is permitted under exceptional circumstances.
Punitive damages may be available where the infringement is particularly egregious or appalling.
In Canada, the Criminal Code provides that it is a criminal offence for a person “by deceit, falsehood or other fraudulent means” to knowingly obtain a trade secret or communicate or make available a trade secret.
The industrial property law declares the general civil measures for infringement of industrial property rights applicable to trade secrets. The owner accordingly has the right to require the cessation of the violation of the trade secret, claim indemnification of damages, the implementation of necessary measures to prevent the infringement from continuing, and the publication of the judgment at the expense of the convicted person, through advertisements in a newspaper of the rights holder's choice.
In addition and based on a recent amendment to the Chilean Criminal Code of August 2023, provisions related to felonies against infringements of trade secrets were replaced in its entirety. In this regard, the original regulation punished the fraudulent communication of "...secrets of the factory in which he has been or is employed," with a penalty of imprisonment up to 3 years or a fine of UTM11 to UTM20 (approximately USD800 to USD1,500). The new wording extends the offense to trade secrets in the same wide terms of the industrial property law, punishing the acts of access, reproduction, disclosure, and economic exploitation of a secret accessed without the authorization of its owner, in some cases subject to imprisonment of up to 5 years.
In case of infringement of trade secrets, the rights owner can either file a complaint with the local administrative authority or bring a lawsuit to the People's Court.
The local administrative authority may order the infringer to cease the infringing activity immediately and impose a fine up to CNY5 million (around USD700,000). In respect of the infringing products, the infringer shall return the materials containing trade secrets or destroy the products manufactured based on the trade secrets unless the rights owner agrees to repurchase the products or dispose of them by other means.
Injunctive relief is available.
Decision 486 states that the mechanisms to protect trade secrets are actions that tend to condemn unfair competition, which are provided for in Article 20 of the Law 256,1996. In this regard, the owner can claim its rights and seek for the corresponding indemnification against those who disclose the information without prior authorization and use it on unfair competition acts.
The attorney general may initiate an unfair competition action ex officio if the action affects the public order. Finally, the owner may claim the protection of its right before the Andean Court of Jurisdiction of the CAN, in the event in which the national authorities do not provide such protection.
Furthermore, trade secrets are protected by the criminal law. For this reason, the infringements may be investigated by the general prosecutor and penalized by the criminal courts with fines of up to 3,000 minimum monthly wages (approximately USD757,091.48) and prison sentence between 32 and 90 months.
If, besides disclosing the trade secrets, the prosecuted has obtained a benefit for themselves or a third party, they will be penalized with fines of up to 4,500 minimum monthly wages (approximately USD1,135.614.03) and prison sentences between 48 and 126 months.
Damages can include actual loss and unjust enrichment caused by misappropriation.
Injunctive relief is also a possible remedy.
Criminal penalties are possible.
An interim injunction may be granted.
An equitable remuneration for illegal acquisition, use or passing on of a trade secret may be awarded. The equitable remuneration may be based both on the loss incurred by the owner of the trade secret and on the profit of the offending party.
Compensation for non-economic damages may be awarded. The damages are intended to compensate for the injury.
Criminal penalties are possible.
In case of an infringement, the owner of the trade secret may proceed by either claiming for damages or injunction based on the Trade Secrets Act or by filing a criminal claim regarding trade secret misappropriation.
Information regarding trade secrets can be removed from public court documents, and the access of public audiences may be limited to public proceedings if it is required for the sake of ensuring secrecy.
Following transposition of the directive, several remedies for trade secret infringement are available under French law, namely the incurring of the civil liability of the trade secret infringer. The French Commercial Code now contains a series of corrective measures (eg, injunction banning or ordering to cease the use and/or disclosure of trade secrets), provisional and protective measures, publication measures and compensation. Those measures may be sought by way of an action on merits or by way of a summary action, namely in case of imminent infringement.
Remedies may include banning the manufacturing, marketing and/or use of the goods which significantly result from a trade secret infringement or the import, export or storage of such products, as well as the partial or total destruction of any document, object or file containing the infringed trade secret.
In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into account distinctively:
The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the trade secret holder, inclusive of loss of opportunity.
The moral harm suffered by the trade secret holder.
As an alternative and upon request of the trade secret holder, French courts may set the damages as a lump sum. This amount is not exclusive of compensation for moral harm caused to the rights holder.
In case of dilatory or abusive actions, French courts may order the trade secret holder to pay a civil fine and/or be liable for damages for dilatory or abusive actions.
Remedies foreseen by the draft act include especially cease-and-desist and damage claims. Damage claims may – similar to most other IP Rights in Germany – be calculated as adequate license fees, infringer's profits or lost profits of the rights holder. In order to calculate damages, the rights holder can ask for a rendering of accounts. Additionally, the rights holder can ask for disclosure of information as to which products embody the relevant trade secret and the person from whom the infringer has obtained the relevant trade secret.
Trade secret owners may make a claim for recall and destruction of "infringing products" – that is, of goods which significantly benefit from trade secrets unlawfully acquired, used or disclosed.
Statutory costs for legal prosecution (ie, court costs and attorney fees) are recoverable up to a cap established by the German law.
Beside the consequences under civil law, the unlawful acquisition, use or disclosure of a trade secret might incur criminal liability.
Remedies available for breach of confidence include injunctions, an inquiry as to damages or an account of profits and delivery up of materials containing confidential information.
According to Hungarian law, it is a criminal offense if a person illegally acquires, uses or discloses a business secret for financial gain or advantage, or makes it available to others or publishes such information, causing pecuniary injury to others.
Act No. 54 of 2018 on the Protection of Trade Secrets also contains special remedies. For example, a person whose trade secrets have been violated, among others, shall have the right to demand:
i. A court ruling establishing that there has been an infringement of rights
ii. The cessation of or the prohibition of the use or disclosure of the trade secret
iii. Destruction of the infringing goods or their withdrawal from the market
iv. The termination of the injurious situation and the restoration of the previous state
v. Restitution of the economic gains achieved through infringement
In the event of infringement of the right to trade secrecy, the proprietor of the trade secret may also demand compensation in accordance with the provisions of civil liability.
It is also common in Hungary to include a chapter into the contracts stipulating a confidentiality agreement, which would set out the amount of compensation (ie, penalty) the breaching party must pay in case of violation.
Infringement of trade secrets amounts to breach of contractual obligations. A party may obtain an injunction, compensation and return or destruction of all confidential and proprietary information.
Compensation, injunction or a combination of the 2 may be ordered by the District Court as remedies for infringement. Criminal sanctions are in the form of imprisonment and/or fine.
The primary remedies available to in relation to trade secrets for infringement:
Criminal fines and penalties are also possible in certain cases.
Misappropriation of one's trade secret is a civil tort that may entitle the plaintiff to several types of remedies – for example, injunction and monetary compensation, including statutory damages of up to ILS100,000 (approximately USD27,500) without having to prove that actual damage was caused.
Any person with reason to fear for the infringement of rights belonging to them, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that their right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, such as injunction and compensation for damages.
Criminal sanctions may also apply under certain circumstances.
Monetary damages can be levied. There are certain statutory presumptions to calculate damages but punitive damages are not available.
Injunctive relief is available as a remedy.
Criminal penalties are available for theft and use of trade secrets.
Civil remedies for misappropriation of trade secrets include:
Reference should also be made to the possibility of obtaining a search order to search the premises and computer in order to find misappropriated data.
Criminal remedies include:
Violation may lead to payment of damages and losses, which shall be determined by the IMPI,based on actual damage and loss. Such payment of damages and losses will in no case will be less than 40 percent of the public sale price of each product or the provision of the services that involve a violation of any of the intellectual property rights governed by the Federal Law for the Protection of Industrial Property (Ley Federal de Protección a la Propiedad Industrial).
Criminal penalties may be imposed.
There can be criminal and civil proceedings for trade secret misappropriation. In principle, both (interim and final) injunctive and monetary relief can be obtained.
The main remedies for infringement available are damages, accounts of profits and injunction. There is also the possibility of punitive damages if the conduct of the defendant is deserving of condemnation.
Criminal penalties are possible under certain circumstances.
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In case of an infringement, the owner of the trade secret may proceed by either claiming for damages or injunction based on the Marketing Act or the Trade Secret Act or by filing a criminal claim.
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Damages, including actual damages, may be claimed by the trade secret owner.
Actual or threatened access or appropriation of trade secrets may be enjoined under injunctive relief.
A party whose interests and rights are infringed by the disclosure of trade secrets may take action against the infringer, demanding that it cease its unlawful actions (using the trade secrets in its business), pay damages – on the basis of the general provisions of Polish law or by the payment of a lump sum equal to the value of the license fee, return unfairly gained profits, redress the effects of the infringement and publish certain statements in this regard, including information on the court judgment or information on its content. The court may also order the destruction of products and other things that are directly connected with the infringement. In such cases, the court may grant a preliminary injunction to be effective while it is considering the main claim. The court may also order discovery.
Conduct which leads to an infringement may include the unlawful disclosure, use or acquisition of a trade secret.
Polish law also provides criminal liability for the infringement of trade secrets. This was recently modified to cover the disclosure or use of trade secrets by persons who became acquainted with them in connection with participation in court proceedings concerning unfair competition related to a trade secret or in connection with reading the files of such proceedings – provided that the court ordered that the proceedings be confidential.
The same rules as in patent infringement cases apply with regard to the court order concerning costs of the proceedings.
Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right or a trade secret right, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.
In case of trade secrets, the court shall take in consideration, notably, the value of the secret or other specific characteristics of the secret, the measures taken in order to protect it, the behavior of the infringer, the impact of the illegal use or disclosure, as well as the legitimate interests of the parties, 3rd parties and public interest and the safeguard of fundamental rights. The judicial decision may impose to the infringer:
Whoever illegally violates trade secret rights of another person with intent or by negligence is obliged to pay a compensation to the injured party for the damages resulting from the violation.
In determining the amount of compensation for losses and damages, the court will take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne with the protection of the right in question and the investigation and termination of the harmful conduct, as well as personal injury, shall also be taken in consideration.
If it is impossible to quantify the losses effectively suffered by the injured party, the court may – provided this is not opposed by the injured party – alternatively define a fixed amount with recourse to equity that is based, as a minimum value, on the remuneration that the injured party would have received if the infringer had requested authorization to use the industrial property rights in question and the costs borne with the protection of the industrial property right and the investigation and termination of the harmful conduct.
The unlawful acquisition, use or disclosure of trade secrets (ie, without the consent of the trade secret holder) is punishable with a fine between EUR3,000 and EUR90,000, depending on the size of the company, if the infringer is a legal person, and from EUR2,000 up to EUR7,500 if the infringer is a natural person.
Trade secret violation or undue use may also be criminally punished with imprisonment up to 1 year or a fine.
The statute of limitation for the protection of trade secrets against unlawful acquisition, use or disclosure is 6 years from the moment the claimant has known or should have known the unlawful acquisition, use or disclosure of the trade secret.
Damages may include actual loss and loss of profit. Statutory attorneys' fees may additionally be awarded. Injunctive relief is also a possible remedy.
At the claimant's request, the court of law may oblige the author of the unlawful act to publish the judgment either entirely or partially.
Certain unlawful acts – such as unlawful use or disclosure of a trade secret – that continue following the judgment of a court of law are punishable with imprisonment or criminal penalties.
The owner of the trade secret is entitled to demand to redress damages in full. Criminal penalties may also apply under certain circumstances.
Remedies include a claim for compensation for damages for any person harmed as a result of a violation of the provisions of the Trade Secrets Regulations.
When a trade secret is leaked, an action may be taken for breach of confidence as a leak of the secret may be unfair to the business and may have harmful consequences. Remedies for breach of contract will be available if appropriate.
The owner of a business secret is legally protected from any interference or threat to their rights related to business secrets.
Trade secret misappropriation in violation of the UCPA is punishable by up to 10 years of imprisonment or a fine of up to KRW500 million; provided, however, if 10 times the pecuniary amount gained from such acts exceeds KRW500 million, the fine will be at least 2 times (not to exceed 10 times) the gain. The penalty is aggravated in case the trade secret is used overseas or disclosed to a 3rd party knowing that such trade secret will be used overseas (maximum 15 years of imprisonment, the fine is up to KRW1.5 billion – or USD1.1 million – subject to the same proviso as above). In addition, the employer (ie, company or an individual) of an employee who committed acts in violation of the law is vicariously liable unless the employer can prove that they were not negligent in preventing such act.
Under the amended Industrial Technology Act which became effective on February 21, 2020, criminal sanctions regarding misappropriation of industrial technology became stronger. A person who commits illegal use or disclosure of industrial technology shall be punished by imprisonment of up to 10 years or by a fine of up to KRW1 billion (USD 700,000). However, in case any of the such acts are committed to "use the industrial technology overseas" or "with the purpose of using the industrial technology overseas," the penalty is increased to imprisonment of up to 15 years or by a fine of up to KRW1.5 billion (USD1.1 million); provided, however, if the industrial technology is a “national core technology,” which is a technology having high technological and economical values in the Korean and overseas markets or high growth potential to its related industries and being feared to exert a significantly adverse effect on the national security and the development of the national economy in the event that it is divulged abroad, the penalty becomes more severe as imprisonment of 3 years or more with a fine up to KRW1.5 billion (USD1.1 million). As under the UCPA, the employer (ie, company or an individual) of an employee who committed acts in violation of the law is vicariously liable unless the employer can prove that they were not negligent in failing to prevent such act.
Korea also implemented the National High-Tech Strategic Industries Act to protect so-called “National High-Tech Strategic Technologies” on August 4, 2022. On June 2, 2023, Korea designated and announced specific types of National High-Tech Strategic Technologies that are eligible for the protection under the National High-Tech Strategic Industries Act. Under the National High-Tech Strategic Industries Act, criminal sanctions regarding misappropriation of National High-Tech Strategic Technology became even stronger. A person who commits illegal acquisition, use or disclosure of National High-Tech Strategic Technology shall be punished by imprisonment of up to 15 years or by a fine of up to KRW1.5 billion (about USD1.1 million). However, in case any of such acts are committed to "use the National High-Tech Strategic Technology overseas" or "with the purpose of using the National High-Tech Strategic Technology overseas," the criminal penalty is increased to imprisonment for not less than 5 years with a fine of up to KRW2 billion (about USD1.5 million). Unlike the UCPA and Industrial Technology Act, the National High-Tech Strategic Industries Act does not have a vicarious liability provision.
There is also specific regulation for the license agreements on trade secrets. They can be exclusive and nonexclusive. Sublicensing requires the prior approval from the owner/s. Exclusive licenses prevents the owner from granting further licenses (and even to use the trade secrets licensed by the owner, except if the parties do allow it by means of an explicit agreement). By default, licenses should be deemed to be non-exclusive. The specific civil and criminal law measures are available for protection of trade secrets in Spain. A wide criminal framework is dedicated to trade secrets infringements, including against disclosure, misappropriation, use or other infringement. Criminal liability for trade secret violation under the Criminal Code, punishable by imprisonment of up to 7 years in most serious cases and fines of up to 24 months.
Liability for damages will occur for corporate espionage or unlawful dealing with a trade secret. The damages are intended to compensate for the injury.
Criminal penalties are possible.
Declaratory actions, actions for performance, damages and an account of profits are available remedies. There is an exception for cases where trade secrets are obtained in good faith, through independent discovery or based on a statutory exemption.
Injunctive relief and publication of judgment are also available remedies in certain circumstances. Criminal penalties are possible in some cases.
Available remedies:
The trade secret owner may seek the following remedies under Ukrainian law:
Seizure of infringing goods or payment of a lump sum (at the defendant's request), provided that the defendant has infringed the IP right unintentionally and without negligence. The amount of the lump sum payment shall be determined by the court as the amount of remuneration that would be paid for the plaintiff's granting permission to use the disputed IP right and shall be reasonably satisfactory to the plaintiff; and
In addition, the Criminal Code of Ukraine dated April 5, 2001 provides for criminal liability for infringements of intellectual property right with regard to a trade secret.
Penalties under the Penal Code include imprisonment for not less than one year and a fine of not less than AED 20,000 (approx. USD 5,450).
Injunctions (or interdicts in Scotland), damages or an account of profits, and delivery up or destruction of records of confidential information illegitimately retained are possible remedies for misappropriation.
Damages may include actual loss and unjust enrichment caused by misappropriation. Treble damages for willful and malicious misappropriation may be awarded.
Statutory attorneys' fees may also be awarded for willful and malicious misappropriation.
Actual or threatened misappropriation may be enjoined. The imposition of reasonable royalties instead of an injunction is permitted under exceptional circumstances.
Criminal penalties are possible under certain circumstances.
Similar remedies are also available under the DTSA, as well as a process by which plaintiffs may ask courts to order the seizure of property "necessary to prevent the propagation or dissemination of the trade secret."
