SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
5.3 Misappropriation of Trade Secrets The acquisition of trade secrets without the consent of their holder is considered unlawful when carried out through: • unauthorised access, appropriation, or copying of documents, objects, materials, substances, electronic files, or other media containing the trade secret or from which the secret may be deduced; and • any other conduct which, in the circumstances of the case, is considered contrary to honest com- mercial practices. The use or disclosure of a trade secret is also consid- ered unlawful when, without the consent of its holder, it is carried out by a person who has obtained the trade secret unlawfully, by a person who has breached a confidentiality agreement or any other obligation not to disclose the trade secret, or by a person who has breached a contractual obligation or any other duty limiting the use of the trade secret. The acquisition, use, or disclosure of a trade secret is likewise unlawful where the person engaging in such conduct knew, or ought to have known in the cir- cumstances, that the trade secret had been obtained directly or indirectly from another person who was using or disclosing it unlawfully as described above. 5.4 Duration and Loss of Protection The protection of trade secrets lasts for as long as the information continues to meet the conditions required to qualify as a trade secret. This allows rights over trade secrets to be transferred in the course of busi- ness transactions and to be licensed, without losing their status as trade secrets. Authorised or accidental disclosure will cause the dis- closed information to lose its status as a trade secret, without prejudice, of course, to any actions that may be brought against the person who made such dis- closure if it was not authorised. 5.5 Enforcement and Remedies Against acts of trade secret infringement, all actions inherent to such violations may be brought, includ- ing a declaration of infringement, cessation of the
the 1991 Act. It implemented several EU directives, in particular Directive 2005/29/EC of 11 May concerning unfair business-to-consumer commercial practices in the internal market, and Directive 2006/114/EC of 12 December concerning misleading and comparative advertising, reorganising unlawful competitive prac- tices and adapting them to modern market conditions. One of these unlawful acts – misappropriation of trade secrets (Article 13 of the Unfair Competition Act) – was later given independent regulation through Law 1/2019 of 20 February on Trade Secrets. This law also implements Directive (EU) 2016/943 of 8 June on the protection of undisclosed know-how and busi- ness information (trade secrets) against their unlawful acquisition, use, and disclosure. The law defines a trade secret as any information or knowledge, including technological, scientific, indus- trial, commercial, organisational, or financial informa- tion, that meets the following requirements. • It is secret, in the sense that, as a whole or in the precise configuration and assembly of its compo- nents, it is not generally known among, or readily accessible to, persons within the circles that nor- mally handle this type of information or knowledge. • It has commercial value, whether actual or poten- tial, precisely because it is secret. • It has been subject to reasonable steps by its holder to keep it secret. 5.2 Reasonable Measures and Confidentiality The law provides that holders must adopt “reason- able” measures to maintain the secrecy of trade secrets. This requires a case-by-case assessment to determine whether such reasonable measures are in place. Depending on the type of information con- sidered to be a trade secret, the measures may vary (eg, restricting access to information, implementing layered security systems, using passwords, and con- trolling access to IT systems). Where the information must be disclosed to employ- ees or third parties, equally reasonable protective measures must be adopted, including the imposition of significant sanctions in the event of a breach of those measures.
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