GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
However, the described prohibition to use the secret does not solve the problem that the opposing party still gains knowledge of the secret and may be able to use this knowledge without exploiting the secret in the literal sense. This pri - marily concerns secrets such as market analy - ses, advertising strategies and price calculations that are not characterised by technical usability. However, even if the secret could be protected by a prohibition of exploitation, the owner of the secret may have an interest in ensuring that the secret information does not become known to the competitor in the first place – eg, because they do not trust the other party to comply with the prohibition and are afraid of future proceed - ings. In all these circumstances, only the exclu - sion of the other party from the process of taking evidence – ie, a genuine secret trial – would be of any help. However, such a procedure is not possible under German law. In the preliminary stage, namely when enforc - ing claims to inspection, there is also a method known as the “Düsseldorf Model” , which was developed by the courts of Düsseldorf and in which the taking of evidence is carried out by an expert, excluding the applicant as far as pos - sible. This procedure was developed for patent infringement litigation, but is also intended to be applied in trade secret litigation. However, this procedure is only applied in favour of the debtor, and only in circumstances where the secret in question is merely evidence and does not con - stitute the subject matter of the dispute itself. 5.9 Defending Against Allegations of Misappropriation The available defences regarding trade secret litigation differ from case to case. Therefore, it is hard to identify the “best practices” trade secret defendant should obey. However, there
are some standard arguments the defendant may try to use. • The defendant may challenge the fact that the information in question constitutes a trade secret at all. This is particularly recommended if it is doubtful whether the protective meas - ures were sufficient, since the burden of proof lies with the owner. • The defendant may deny that the acquisition, use or disclosure of the secret is an offence against the TSA. This can be particularly advisable in contractual relationships where no separate confidentiality agreements were concluded. As an employee, the defence might be that the relevant information was memorised. • The defendant may claim that they have obtained the trade secret through their own independent development or via reverse engineering. • If the lawsuit is brought against a third party who was not involved in the actual infringe - ment, but only acquired the trade secret or infringing goods at a later date, the third party can defend itself by arguing that it did not know and did not have to know, under the circumstances, that the trade secret had been obtained unlawfully. Furthermore, if the trade secret owner asserts claims for inspection against the defendant in order to obtain evidence, the defendant may be able to defend itself against this inspection by invoking its own confidentiality interests. 5.10 Dispositive Motions German law does not provide for a disposi - tive motion. If the claim is inconclusive, it is dismissed. If the claim is conclusive and the defendant does not submit a motion, a judg - ment by default is issued. However, both kinds
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