GERMANY Trends and Developments Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
sions of the TSA do not apply to information that would be disclosed by the enforcement of an already enforceable claim for information. As there is a lack of clarity in this respect in the case law, it is currently advisable to work towards comprehensive confidentiality measures in the main proceedings before enforcement. Former Employees and the Allocation of Know-How While the TSA has led to numerous changes and significant improvements in the protection of trade secrets under German law, there are some issues that the TSA does not address. Apart from the question of which criteria should be used to assess the value of a trade secret, this concerns in particular the utilisation of trade secrets by former employees. For decades, case law and literature have been dealing with the issue of finding a proper bal - ance between the confidentiality interests of companies and their former employees who wish to benefit from their professional experi - ence and knowledge. In theory, German trade secret law distinguishes between an employee’s general knowledge and skills, which they are free to use after they leave their employer, and trade secrets, whose ownership remains with the employer. In practice, however, this differ - entiation has almost exclusively been based on whether the employee had to have access to documents in order to be able to use the secret (in which case they were not allowed to use it) or whether they could reproduce the information from memory (in which case they were allowed to use it). In one of the first decisions on this subject under the TSA, the Düsseldorf Labour Court contin - ued to apply this schematic distinction and ruled that an employee who has left the company may
use trade secrets that they have acquired in the course of their work without restriction, even to the detriment of their former employer, if and to the extent they can reproduce them from their memory. However, this does not include informa - tion which is only known to them because they can extract it from documents which they have drafted during the employment period, including documents that are still available to them, eg, in the form of private records or stored as a file in a private notebook. It remains to be seen whether other courts and most importantly the CJEU will also maintain this schematic differentiation between “memo- rised knowledge” and “written knowledge” . In the authors’ opinion, against the background of the ETSD, it will be necessary to give more consideration to whether an employee who has left a company is dependent on having access to the acquired knowledge in order to be able to compete on the labour market. This is because, according to Article 1 (3) of the ETSD, “this Directive shall not offer any ground for: […] (b) limiting employees’ use of experience and skills honestly acquired in the normal course of their employment” . In a decision that was more differentiated than the considerations mentioned above, the Karlsruhe Higher Regional Court dealt with a former employee who had conducted customer satisfaction research after the end of his employ - ment contract and had used customer data (and thus trade secrets of his former employer) for this purpose. The Court found that such use violated the post-contractual duty of loyalty and violated the TSA because the former employee’s enquiries with the employer’s customers could cause irritation among the latter, which could possibly disrupt customer trust in the employer.
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