AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
1.4 Elements of Trade Secret Protection An obligation of confidence will arise if it includes the following elements ( Dart Industries Inc v David Bryar & Associates Pty Ltd (1997), FCA 481). Firstly, the infor - mation must have the necessary quality of confidence and not be a matter of common knowledge or in the public domain. Secondly, the information must have been imparted in circumstances identifying an obli - gation of confidence. Additionally, the information in which confidentiality is claimed must be capable of being identified with a degree of specificity. 1.5 Reasonable Measures In Australia, a trade secret owner is required to take reasonable measures to keep the information secret in order for the information to qualify as a trade secret. A court will consider what measures the owner of the information took to guard the secrecy of the infor - mation; eg, by way of non-disclosure agreements, IT security measures, and controlling access to facilities. Courts have held, for example, that disclosure of infor - mation without imposing an obligation of confidence will mean that the information does not have the nec - essary quality of confidence and is therefore not a trade secret. Similarly, if the information is disclosed in a document – eg, a manual – that is not restricted, then the information does not have the necessary quality of confidence. In making an assessment as to whether a company took reasonable measures to protect its trade secrets, Australian courts will consider all the facts and circum - stances of the case, including, for example, the nature and scale of the company and type of information. 1.6 Disclosure to Employees In Australia, it is implied into all employment contracts that the employee will act with good faith towards their employer and that the employee has duties of confidence to their employer. Additionally, an employee will have obligations to their employer pursuant to Sections 182 and 183 of the Corporations Act.
International Treaties Australia is a party to major international intellectual property (IP) treaties, including the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement). The TRIPS Agree - ment sets out general principles and contains mini - mum standards on IP and enforcement procedures to which Australia adheres. Article 39 (2) requires mem - ber states to accord protection against unauthorised use of “undisclosed information” in a way that is “con - trary to honest commercial practices”, and defines “undisclosed information” for this purpose as: • secret in the sense that it is not, as a body or in the precise configuration and assembly of its compo - nents, generally known among or readily accessi - ble to persons within the circles that normally deal with the kind of information in question; • having commercial value because it is secret; and • having been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. International treaties apply only to the extent that they are incorporated into domestic law. 1.2 What Is Protectable as a Trade Secret Information will be a trade secret if it has the neces - sary quality of confidence and is not within the public domain. Such information can include technical infor - mation such as software algorithms, data, formulae, manufacturing processes and commercial information such as client and customer lists, information relating to pricing, sales forecasts and advertising strategies. 1.3 Examples of Trade Secrets Information in Australia that has been found to have the necessary quality of confidence to be a trade
secret has included, for example: • client, customer and supplier lists; • designs such as building plans; • marketing materials; • mathematical spreadsheets; • information relating to pricing;
• sales forecasts; and • business information.
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