Spanish law lacks a per se regulation on the protection of trade secrets. It is regulated indirectly by way of prohibitions and limitations established in various texts, both civil and criminal.
The first issue on this matter to point out is that the concept itself is not properly defined by the provisions currently in force – something which definitely characterises the upcoming EU Trade Secrets Directive (the Directive) as a leap forward on the matter.
The concept of a trade secret has not been deeply developed by Spanish courts.
One set of rules prohibiting the violation of trade secrets is the Spanish Criminal Code, which contains provisions, Articles 199 and 200 therein, setting out the prosecution of those who reveal third-party – either a natural or legal person – secrets accessed as a consequence of a labour relationship or secrets in respect of which the violator has undertaken an obligation of confidentiality.
The Spanish Supreme Court (in its Judgment nº 285/2008, of 12 May 2008, Second Chamber on criminal affairs) has also outlined the criteria it will use to ascertain the existence of what will be considered as trade secret, so as to interpret the provisions of the Spanish Criminal Code on the violation of secrets. The judgment defines trade secrets very broadly as "any information which, in case of disclosure, will affect the competitiveness of the company in the market".
The Supreme Court went on to establish that, under the concept of trade secrets, technical-industrial secrets, commercial secrets, as well as purely organizational ones, can be understood to be included. Also, the information needs to be:
In the civil domain, Spanish law regulates the unlawfulness of violation of trade secrets (albeit solely in the form of industrial secrets) by means of the Spanish Unfair Competition Act (UCA). Article 13 UCA prohibits any disclosure or use, without the authorisation of the owner, of industrial secrets or any other type of business secrets to which access is either legitimate with duty of confidentiality or unlawful. This provision requires the violation of the secret to be performed with the aim of attaining personal or third-party advantage or harming the owner of the secret.
Therefore, according to the range of provisions prohibiting unlawful use of trade secrets, it will be possible to seek remedies against the disclosure of the secret by means of a civil procedure, in case of an unfair practice, or a criminal prosecution, the latter leading to criminal penalties and civil redress.
Once the legal grounds for seeking remedies against wrongdoers are clear, it is worth noting common ways of protecting trade secrets under Spanish law. Rules and obligations are normally set out in contracts to be signed with employees and directors, for instance, as well as confidentiality clauses, non-competition clauses or penalty clauses – the latter operating in cases of breach or failure to comply with those obligations.
The inclusion of such covenants in agreements means they may be enforced before a Court in case of breach. Therefore, civil redress might also be awarded if breach of contract is proven.
Spanish law for the protection of trade secrets, like that of all other EU Member States, is soon to be reformed by the Directive. However, it is worth noting some similarities between Spanish law as it presently exists and the current state of the draft Directive. In general terms, Spanish law provisions on the protection of trade secrets are mostly aligned with the current wording of the position of the Council of the European Union taken in 2014.To take some examples:
In general terms Spanish law includes all the measures set out in the draft Directive. The Spanish UCA provides for declaratory and injunctive relief (cessation, prohibition and withdrawal) and the Spanish Civil Procedural Act includes interim and precautionary measures.
Beyond these precautionary measures, the injunction and corrective measures are developed in the draft Directive. The Spanish regulations allow any of those measures to be sought on behalf of the interest of the claimant.
Spanish law contains no provision for calculating damages. The claimant must determine the amount he considers legitimate and the judge is empowered to reduce it. Spanish courts rarely award moral damages; the damages available to a claimant are those arising from the valuation of the damages itself and the loss of potential profits.
Rafael García del Poyo
Partner, Spain
Samuel Martínez
Senior Associate, Spain