GERMANY Trends and Developments Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
tions can qualify as appropriate confidential measures, for example in the form of access, entry and availability controls to secure data pro - cessing as well as the documentation of infor - mation retrieval. This also includes the creation of a data protection manual and technical and legal requirements, eg, employment contract provisions on confidentiality or the agreement of obligations to hand over documents imme - diately. As can be seen from the decisions referred to above, legal certainty is increasing. However, as long as the Court of Justice of the European Union (CJEU) has not decided, under the ETSD, which steps need to be taken to ensure the required level of reasonable protection meas - ures, many details (eg, on the validity of so- called catch-all clauses and the proper design of non-disclosure agreements) are still unclear, controversial and the subject of lively discus - sion. It can be assumed that this question will continue to be one of the dominant issues in the future. Such a future decision of the CJEU will also be binding on the German courts when applying the TSA. Scope of Application of the TSA Several decisions have dealt with questions relating to the scope of application of the TSA, primarily regarding the temporal scope of appli - cation and the question of whether the statu - tory definition of the term “trade secret” (and the associated need to maintain appropriate confi - dentiality measures) also applies in other areas of law. For example, some provisions of com - mercial and corporate law, as well as public law, still refer to the outdated term of “business and trade secrets” . The Federal Administrative Court considered that the definition of a trade secret as laid out in the TSA also applies with regard to secret information in public law proceedings.
The Higher Administrative Court of the Federal state of Nordrhein-Westfalen also referred to the definition of the TSA for guidance when inter - preting a public law provision of cartel law. In civil law, the Düsseldorf Higher Regional Court ruled that the requirements stipulated by the TSA do not apply when deciding on the disclosure of a written expert opinion within the framework of independent proceedings for taking evidence. Third-Party Liability and Legal Consequences The TSA significantly extended third-party liabil - ity compared to the former German law on trade secrets; previously, the use or disclosure of a trade secret by a third party in a mere negligent misjudgement of a prior breach of secrecy did not constitute an infringement. Under the TSA, the acquisition, use or disclosure of a trade secret is also considered to be unlaw - ful “whenever a person, at the time of the acqui- sition, use or disclosure, knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclos- ing the trade secret unlawfully” . This applies in particular with regard to (i) the production, offer - ing or placing on the market of infringing goods, or (ii) the importation, exportation or storage of infringing goods for such purposes. In addition, the TSA significantly expanded the legal consequences for infringers. While under the previous German law the claimant could already sue for injunctive relief or damages, claims for recall or removal of secret-infringing goods from distribution channels were limited to very specific cases. The trade secret owner could only demand the destruction and surren - der of documents containing the secret and of products in which the secret was embodied.
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