GERMANY Trends and Developments Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
Moreover, the secrecy requirement was linked to the exclusion of the public, which could be imposed at the oral hearing at the earliest. How - ever, the risk of disclosure of a trade secret to the opposing party is not limited to the oral pro - ceedings, but extends from the filing of the suit to the taking of evidence in the oral proceedings to the pronouncement of judgment throughout the entire infringement proceedings. This problem has been partially mitigated by the TSA. The trade secret owner cannot only prohibit the opposing party from using the secret, but this restriction can be imposed as soon as the lawsuit is pending – ie, when the statement of claim is served – and continues to apply even after the conclusion of the court proceedings. Although the TSA’s provisions on secrecy in civil proceedings represent a step forward, they were (especially in the beginning) not sufficient, as they initially only applied in proceedings regard - ing trade secret litigation – and therefore not in proceedings in which a trade secret is not the subject of dispute but merely evidence (eg, in patent infringement actions) or in criminal pro - ceedings. This limited area of application has been gradually extended in recent years. First, in 2021, the confidentiality provisions of the TSA were extended to apply in certain patent pro - ceedings, and, with effect from 1 April 2025, a new Section 273a of the German Code of Civil Procedure will extend the confidentiality provi - sions of the TSA to all civil proceedings, pro - vided that the information in question can be a trade secret within the meaning of the TSA. However, even though this step is overdue and a welcome development, a procedural restriction to use or disclose a trade secret does not solve the problem of the other party gaining, as a fact, knowledge of the secret, which may enable it
to use this knowledge. This primarily concerns secrets such as market analyses, advertising strategies and price calculations, which are not characterised by technical usability. In addition to the question of whether the con - fidentiality measures of the TSA are applicable at all, there were various discussions and judi - cial clarifications about their prerequsites. In a highly controversial decision by the Mannheim Regional Court, the Court held that an NDA concluded between the parties generally pre - cludes the further ordering of the confidentiality measures of the TSA if the other party is already contractually obliged to keep the information in question confidential under penalty. Similarly, the Higher Regional Court of Düsseldorf includ - ed the circumstance of an NDA in the balancing of interests that is required before the adoption of extended protective measures pursuant to the TSA. In the next instance, the Karlsruhe Higher Regional Court ruled that an NDA does not gen - erally exclude the confidentiality measures under the TSA, as these offer more intensive protection for the applicant than an NDA. The authors share the same opinion. There is now clarity on the question of the types of proceedings to which the TSA’s confidential - ity measures are directly applicable. The word - ing only mentions legal actions ( Klagen ), which strictly speaking does not include independent evidence proceedings. However, the Federal Court of Justice has ruled that these proceed - ings are also covered. In this context, it was also decided that confidentiality measures ordered on this basis under the TSA can – exception - ally – also be challenged independently of the appeal on the merits. In 2023, the Higher Regional Court of Düsseldorf ruled that the procedural confidentiality provi -
101 CHAMBERS.COM
Powered by FlippingBook