Trade Secrets 2025

GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz

2.2 Employee Relationships In principle, it makes no difference in a lawsuit whether or not the defendant is an employee of the owner. With regard to trade secrets that the employee has (legally) obtained through their work, however, the claim may only be based on unlawful use or disclosure of the trade secret. In principle, an employee is obliged to keep all trade secrets of their employer in confidence – even without an explicit obligation of secrecy. However, if the need for confidentiality of a piece of information cannot be clearly deduced from its nature, the employer must prove that it has instructed the employee about the need for confidentiality. It should also be noted that the enforcement of claims against employees is subject to the jurisdiction of the labour courts in Germany. 2.3 Joint Ventures In principle, there are no special legal obligations between joint venture companies with regard to trade secrets. This means that the conclu - sion of confidentiality agreements between joint venturers is essential for companies under the new legal situation. According to the previous legal situation, the disclosure of trade secrets to third parties without concluding a confiden - tiality agreement did not lead to the loss of the characterisation as a trade secret, at least not to the extent that the recipient was obliged to maintain secrecy based on the interpretation of the contract. It is questionable whether this still applies with the introduction of the TSA. Although the conditions for qualifying confi - dentiality measures as appropriate are still not entirely clear due to relatively few court deci - sions (see 1.5 Reasonable Measures ), there are reasonable grounds to believe that a court could consider, for example, the release of particularly

Lastly, the production, offering or placing on the market of infringing goods (which means goods whose design, characteristics, functioning, pro - duction process or marketing significantly bene - fits from trade secrets unlawfully acquired, used or disclosed) or the importation, exportation or storage of infringing goods for those purposes shall also be considered an unlawful use of a trade secret where the person carrying out such activities knew or ought, under the circumstanc - es, to have known that the trade secret was used unlawfully. The prohibition of the distribution of infringing products is very extensive and aims to prevent third parties from using foreign work without the consent of the trade secret owner and to ensure that the trade secret owner receives their pio - neering return – ie, their competitive advantage. If the owner’s claim of misappropriation is based on an unlawful acquisition, it is sufficient to show that the defendant gained access to the trade secret without permission; there is no need to show that the trade secret was actually used. If, however, they refer to an unlawful use or dis - closure, they have to prove the act of usage or disclosure and either the unlawful acquisition or a contractual breach. If the owner does not base their claim on a con - tractual breach, they have to show and bear the burden of proof that the defendant (or the person from whom the defendant got the secret) gained access to the trade secret through unlawful means. This is a major problem for the owner in many cases, even if presumptions and indica - tions may work in their favour in certain circum - stances.

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