INDIA Law and Practice Contributed by: Pravin Anand, Achuthan Sreekumar and Rohil Bansal, Anand and Anand
It is not mandatory for an owner of a trade secret to prove that their confidential information has been misused by the defendant. The very fact that the defendant misappropriated the claim - ant’s trade secret demonstrates that the misap - propriation was not just to steal the trade secret but to also acquire some unlawful gain from it, which gives rise to credible apprehension of future misuse by the defendant, entitling the claimant to take legal recourse. In a civil proceeding, the rights-owner of a trade secret is merely required to show that the defendant has without authorisation accessed their trade secrets, as a prohibitory order of injunction by a civil court can be passed against the defendant, even in the absence of malice. 2.2 Employee Relationships Trade secrets law in India does not differenti - ate between an employee and a third party. The essence of the law vests in the obligation to maintain secrecy in such confidential informa - tion that is not available in the public domain, and which ought to not be used without a licence from the rights-holder. For an employee, the terms of employment may include a non-disclosure covenant, prohibiting them from disclosing confidential information they were privy to during the course of employ - ment. Such a contractual obligation may not be pre - sent between the rights-owner and an independ - ent third party. However, even then, such a third party shall be prohibited by courts in India from misappropriating the trade secret. In Zee Telefilms v Sundial Communications; (2003) 5 Bom CR 404, the Bombay High Court held that the obligation of confidence does not
apply only to the original recipient but also to any other person who receives such information with the knowledge of an obligation of confidence. The courts must see that the information sought to be protected was not available in the public domain, and was communicated to the employ - ee or the third party with a clear obligation to maintain secrecy, which they violated. Therefore, employees would know certain facts and information without any special effort that cannot be termed as trade secrets, and a court may not entertain a claim to injunct the employ - ee from using said information (see the Star India case). 2.3 Joint Ventures No codified law recognises the existence of any obligations between joint venturers with respect to trade secrets. The parties can determine such rights and obligations concerning the exchange of trade secrets. Such agreements are governed by the Indian Contract Act. Irrespective of the relation between parties with respect to sharing or use of confidential informa - tion, in the case of a dispute courts are guided by principles of equity, whereby whoever has received information in confidence may not take unfair advantage of it. 2.4 Industrial Espionage As industrial espionage includes misappropria - tion of trade secrets, theft, cheating, etc, civil and criminal claims can be made by the claim - ant. A detailed analysis of civil claims is covered in 7.2 Measures of Damages , 7.3 Permanent Injunction and 7.5 Costs . Criminal claims are
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