INDIA Law and Practice Contributed by: Pravin Anand and Rohil Bansal, Anand and Anand
4.2 New Employees The practices followed by companies while hiring employees from competitors vary. The following pre - cautions may be taken to reduce the chances of being subject to a trade secret misappropriation claim: • a written undertaking from the employee confirm - ing that they have not retained any trade secret of their previous employer; • a written declaration from the employee clearly stating that the current employer did not seek any trade secret of the previous employer from the employee; and • a written undertaking whereby the employee indemnifies the current employer from any harm resulting from any act or omission of the employee as regards any confidential information pertaining to the previous employer. 5. Trade Secret Litigation 5.1 Prerequisites for Filing a Lawsuit The procedure is as follows: • The defendant(s) needs to be identified. • The rights-holder should collect all relevant docu - ments, such as contracts, correspondence with the defendant, etc, to show that the information in question can be considered “trade secrets”. • Evidence to show violation or misappropriation by the defendant needs to be tendered. • One also has the option of filing a case against an unknown defendant (ie, a “John Doe”) and subse - quently adding a party once their identity is ascer - tained through discovery. • If documents in support of the plaintiff’s case are to be taken from various other parties, appropriate requests seeking interrogatories need to be filed. • If the details are to be taken from intermediaries such as domain registrars, banks, etc, they can be made pro forma for the defendant to the suit. • The rights-holder should have an authorised rep - resentative in India to sign and file papers on their behalf. Such an authorisation can be made by way of a simple power of attorney.
tor post-termination. However, a negative covenant operating against the employee during the period of service was held to be legal. 4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise Indian law surrounding trade secrets clearly differen - tiates between the trade secret of an employer and the general knowledge and skill set that the employ - ee hones during employment. As upheld in the Star India case, employees who have been working for an employer would know certain facts and information without any special effort and which cannot be termed as trade secrets of the employer, and a court may not entertain an employer’s claim to injunct the employee from using said facts and information. In Bombay Dyeing v Mehar Karan , the court relied on the judgments of the US Court of Appeals, Tenth Circuit in Rivendell Forest v Georgia Pacific 31 USPQ 2d1472 and in Kodekay Electronics v Mechanex Corp 486 F 2d 449 (Tenth Circuit 1973), and held that something which is known outside the business or to those inside the business (ie, the employees), and for the guarding of which no steps have been taken and for the development of which no effort or money has been expended, cannot be a trade secret. Therefore, while an employer cannot restrain an ex- employee from joining a competing business or from starting a competing business, it can certainly prohibit the ex-employee from disclosing information exclusive - ly imparted to the employee by the employer during the course of employment, which is not part of public knowledge and which, if divulged by the employee, will lead to adverse consequences for the employer. The doctrine of inevitable disclosure is not recognised in India as such. However, if the employee unintention - ally discloses a trade secret of their former employer to their current employer, the former employer may be able to bring a claim for damages and injunctive relief against the ex-employee and their current employer. Please refer to 2.1 The Definition of Misappropria - tion .
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