13 December 2019

The act of 30 July 2018 transposed Directive (EU) 2016/943 on trade secrets into Belgian law (see Eubelius Spotlights September 2018). The new articles XI.332/1 to XI.332/5 and XI.336/1 to XI.336/5 of the Economic Law Code are intended to provide better protection against the unlawful acquisition and use of trade secrets. The Antwerp business court was one of the first to apply these new rules in a judgment in May 2019.

On 9 May 2019, the Antwerp business court had to decide whether a service provider, who had been providing services to a company as its "technical right-hand man" for more than 20 years, had infringed the copyright, database rights and/or trade secrets of that company by copying large quantities of computer files to a USB stick. The copied files included various sketches, (technical) drawings, diagrams, manuals and photographs relating to the principal's production lines.

No infringement of intellectual property rights

The court ruled that there was no infringement of intellectual property rights, as the copied files were neither protected by copyright nor by sui generis database rights. The plaintiff did not sufficiently demonstrate that the documents copied onto the USB stick were original (and not technically determined), or how the company had made substantial, qualitative or quantitative investments in order to produce a database. In this respect, the court emphasised that the collection and structuring of information that is useful for the company's business operations is not in itself sufficient to create database rights.

Infringement of the new legislation on the protection of trade secrets

However, the court found that the service provider's actions did breach the rules on trade secrets. According to the court, the copied documents contained information that could be used to rebuild the principal's production lines. This information is not generally known to the public, which creates commercial value as the use of the information allows optimisation of the production lines concerned. Furthermore, the court considered that the company had taken reasonable measures to keep this information confidential, inter alia by including a confidentiality obligation in its agreements with suppliers and employees and by investing in data security on its servers.

According to the court, the service provider had obtained the trade secrets unlawfully. Under article XI.332/4 of the Economic Law Code, the acquisition of trade secrets is unlawful if it takes place through the unauthorised appropriation or copying of documents containing the trade secrets or documents from which the trade secrets may be inferred, or through unauthorised accessing of these documents. In its judgment, the court deduced the service provider's lack of authorisation from the fact that he could not provide a credible reason justifying the reproduction of such a quantity of documents on a USB stick.

Implicit confidentiality obligation

At the same time, the court ruled that, even though there is no written agreement with an explicit confidentiality clause between the parties, the complementary impact of good faith does, nevertheless, create an obligation of confidentiality. As a result of that confidentiality obligation, the service provider was obliged to limit the acquisition (and not only the disclosure) of the company's trade secrets. By copying the documents without any reason, the service provider knowingly and willingly violated the trade secrets of his principal.

Sanction

The business court ordered the cessation of further use and dissemination of the trade secrets, under penalty of a payment of EUR 25,000 per infringement up to a maximum of EUR 200,000