SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
infringing conduct, seizure of infringing goods where applicable, or their transfer to the trade secret holder, an award of damages, and the publication of the judg- ment, in whole or in part. Interim relief may also be requested, provided that the general requirements are met: prima facie case (fumus boni iuris), risk in delay (periculum in mora), and the provision of security. All such actions are subject to a limitation period of three years from the moment the entitled party becomes aware of the identity of the person who committed the trade secret infringement. Spanish law also classifies as a criminal offence (Arti- cles 278 and 279 of the Criminal Code) the unlawful disclosure of industrial secrets or the unlawful exploi- tation of information communicated under an express or implied duty of confidentiality. In cases involving trade secret information within judi- cial proceedings, the law provides for measures to be adopted by the court to ensure that all persons who may access the information maintain its confi- dentiality. Such measures include restricting access to certain individuals (lawyers, court representatives, parties, etc), limiting access to hearings, and keeping the information separate from the main case file docu- mentation, among others, while respecting the right to effective judicial protection, the right of defence, and any potential prejudice that such restrictions may cause to the parties to the proceedings. 6. Know-How 6.1 Definition and Legal Basis of Know-How In Spain, know-how is not subject to specific legal regulation or definition; rather, its protection is gov- erned by the rules on trade secrets, as outlined above, as well as by the civil law governing contracts, which is based on the parties’ mutual agreement. Consequently, the main protection is provided by the Unfair Competition Act and the Trade Secrets Act, as well as the applicable provisions of the Civil Code regarding the regulation of contracts. As it is an
unregistered intangible asset, its protection depends on confidentiality, non-disclosure agreements (NDAs) and any clauses that may be included in employment and commercial contracts. 6.2 Protectability Requirements and Scope Know-how can be used to protect manufacturing processes, assembly techniques, chemical formulas, product compositions and any other type of techni- cal and/or commercial information acquired through business experience. Know-how may be the subject of legal transactions such as licensing or transfer, just like any other intan- gible asset of the company, and although it does not confer an exclusive right, its protection is obtained through mandatory confidentiality and the legislation mentioned in 6.1 Definition and Legal Basis of Know- How . The requirements are those of trade secrets: it must be secret, have commercial value, and reasonable measures must be taken to keep that knowledge and/ or information secret. Similarly, it must be described in such a way that it can be verified. 6.3 Ownership, Creation and Employee Know-How In Spain, it is presumed that the employer is the owner of know-how created by employees, provided that the know-how was developed within the context of an employment relationship or a contract for the provi- sion of services, and using the company’s resources. Therefore, whether the know-how has been gener- ated because the employee was specifically hired to research or develop methods (an R&D department, for example) or whether the know-how is developed using the company’s information, time, resources or infrastructure, ownership of the know-how will always belong to the employer. 6.4 Protection Through Contract and Confidentiality Know-how is primarily protected through contracts. Where the aim is to protect know-how from third parties, this is achieved through non-disclosure agreements (NDAs); where the aim is to protect it from employees and/or contractors, this is achieved
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