GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
types of information that are protectable, under German law before the enactment of the TSA, the Federal Court of Justice (FCJ) ( Bundesger- ichtshof , or BGH) has affirmed all kinds of secret information as trade secrets – eg, customer and supplier lists, cost information, business strategies, company data or market analyses, manufacturing processes, design drawings, prototypes, formulas and recipes, production equipment and tools, templates and computer programs. As outlined in 1.2 What Is Protect- able as a Trade Secret , any of these examples could generally be protected under the TSA as well. 1.4 Elements of Trade Secret Protection Pursuant to Section 2 No 1 of the TSA, any type of information can be protected as a trade secret as long as: • it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question, and it has commer - cial value because it is secret; • it has been subject to reasonable measures of protection against disclosure considering the respective circumstances, by the person lawfully in control of the information; and • there is a legitimate interest in confidentiality. Whereas the German legislator took the first two conditions directly from the ETSD, the requirement of “legitimate interest in secrecy” was inserted autonomously. The practical rel - evance of this additional requirement, however, is doubtful. Since Article 1 (1) of the ETSD lays down a minimum standard for the protection of trade secrets, which the member states may extend but not restrict, it can be assumed that
information, even if it does not fulfil the condition of the third point, is nevertheless to be regarded as a trade secret in accordance with the superior ETSD. 1.5 Reasonable Measures Pursuant to Section 2 No 1 litera b) of the TSA, the trade secret owner is obligated to take rea - sonable measures of protection, considering the specific circumstances, to keep the information secret and, in the event of a dispute, has to prove that the measures taken were sufficient. As the requirement of appropriate confidential - ity measures was only recently introduced by the TSA, which came into effect in 2019, there is little case law yet regarding this matter, and neither the TSA nor the ETSD stipulates any spe - cific requirements as to what specific types of secrecy measures must be taken. However, it is common sense that the trade secret owner must “only” ensure appropriate (and not the best possible or maximum effective) safeguards. Apart from that, the measures to be taken cannot be determined in the abstract, but will depend on the specific nature and value of the trade secret as a whole and for the com - pany, the size of the company, the costs and the standard of the measures. In general, five types of measures may be considered (usually in a combination that is not necessarily required to cover all types), as set out below. • First, information should be marked as con - fidential, either individually or in its entirety, where its secrecy does not become apparent from the circumstances. • Secondly, confidentiality obligations should be expressly provided for in the contract con - trolling the share of the information in ques - tion, if they are not apparent from the nature of the contract – the conclusion of a separate
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