1. TRADE SECRETS workshop III
© 2009 Prof. Charles Gielen
EU-China Workshop on the Protection of Trade Secrets
Shanghai June 2009

2. Litigating trade secrets
Reminder: art. 1.2 TRIPs: IP also refers to protection of TS
Therefore, Part III of TRIPS is applicable to enforcing TS
Enforcing IP rights harmonized in EU through Enforcement Directive of 2004
Peamble of Dir.: to define the scope of this Directive as widely as possible in order to encompass all the intellectual property rights
Unclear whether Dutch law implementing the Directive applies to protection of TS
I think it does also in the light of TRIPs: what does that mean?

3. What can Rising Sun do?
In case of violation of its TS rights: what is the weaponry available to Rising Sun to get
evidence of infringement
information concerning the infringement
an injunction against the infringement?

4. Dutch procedural law
Implementation of the Enforcement Directive per 1 May 2007 in Code of Civil Procedure (“CCP”)
New measures for taking evidence (based on Art. 7 resp. 6 Dir 2004/48 EC):
description (including videotaping and photographing)
taking of samples
preservation of evidence (by seizure of it) including (copies of) documents (also digital)
motion to get access to evidence
In addition to existing pre-trial measures:
preliminary (expert) witness hearings (art. 186 CCP)
preliminary expert opinion (art. 202 CCP)

5. Preservation/description evidence
Legal test for admissibility of ex parte preservation/description order: “sufficient likelihood of infringement or threat of infringement” (1019b (1) CCP)
relatively not too high a threshold, but need to satisfy the Court is required and mere speculation of infringement leads to rejection of application - lower than likelihood of infringement in summary proceedings (“kort geding”): Abbott/Teva District Court The Hague 2007

6. Preservation/description evidence
Evidence collection procedures as currently applied enroll in two stages:
Preservation of evidence by seizure through Court application/order, evidence is then put into custody; defendant won’t be heard as a rule
File motion to obtain access to the evidence in separate action (Art 843a jo. 1019a CCP), defendant will be heard
If protection of confidential information is not safeguarded, 1019a dictates rejection of the application

7. Preservation by seizure of evidence
Seizure conducted by a bailiff, normally assisted by independent expert/patent attorney and, if necessary, computer expert appointed in the order
Results of seizure/description/taking of samples transferred to independent custodian – possibly sealed until further court order

8. Access to evidence
Plaintiff entitled to access the evidence if there is a “legitimate interest”
Establishing infringement is legitimate interest
But in case of mere threat legal uncertainty: not in The Hague, Abbott/Teva 2007, yes in Amsterdam, Meissen/Deko 2008
Access cannot amount to an order to release entirely to plaintiff: Art 843a CCP: looking into/obtaining copies/obtaining resume’s
Trade secrets need protection
No published case law on successfully conducted access proceedings yet, developing field

9. Access to evidence Distinction between types of information
Technical information to establish/support infringement
Access during/prior to proceedings
Commercial/accounting information
Access after infringement has been found, is not in dispute
Medtronic/Abbott, District Court Maastricht 2008
Meissen/Deko, District Court Amsterdam 2008

10. After seizure/description/taking sample, what then?
Analysis of the seized sample
Disassembly/testing device for days or weeks is very likely to be rejected:
- doubtful this qualifies as “description” as meant in 1019d CCP
But perhaps (though very unlikely) possible if:
this evidence is essential/other technical documents (allegedly) not available;
impact on the business is kept to a minimum (test products in stock at Shining Moon’s facility)
an unconditional undertaking/bank guarantee to compensate damage is provided

11. How to stop Shining Moon?
Main Proceedings
Mostly panel of 3 professional judges
Takes appr. one year
Preliminary injunction proceedings (“kort geding”)
May be issued within hours or days during trade fairs (also ex parte – without Shining Moon being heard -, which is highly exceptional in patent or TS cases)
Otherwise: a few weeks or faster if need exists

12. Summary proceedings
Unique features Dutch “kort geding” (summary proceedings)
Literal: “short proceedings”
True characteristics: “mini full proceedings”
Widespread and frequently used by parties internationally
Rulings of strictly preliminary nature – no bearing on main proceedings whatsoever
Experience shows that disputes often finally settle after a ruling in “kort geding”, especially in “heavily litigated” cases
Limited to “urgent” cases; ongoing (threat of) infringement basically suffices

13. Summary proceedings
No formal written phase, but Defendant can file answer to writ of summons + possibility to file counter-claim
Mainly aimed at preliminary injunction, very rarely at obtaining provisional damages
Not limited to “simple cases”
Judgment handed down 14 days after hearing, written and reasoned
Provisional evaluation of the likely outcome in the main proceedings – lower level of proof compared to full proceedings (probable cause vs. balance of probabilities)

14. Rising Sun v. Shining Moon
Rising Sun should try to preserve as much evidence as possible in early stage
file requests for description/seizure of evidence incl. sample
request access to sample for analysis
if infringement found
file for summary judgment +
file for case on the merits and request access to seized evidence
Shining Moon to assess whether confidential information is involved
If so, ask for court order to preserve the trade secrets
if it can be shown that case is without merits: request lift of seizure
file a defence in the summary case and in the case of the merits

15. THANKS!