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.
Protections under criminal law
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:
- solely owned by the company;
- confidential; and
- economically evaluable for its business activities.
Protections under civil law
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.
Protections under contract
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.
Similarities with the Directive
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:
- The draft Directive requires Member States to provide measures to ensure the availability of civil redress against unlawful acquisition, use and disclosure of secrets to provide safeguards against their abuse.
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.
- The draft Directive requires Member States to provide a statute of limitations for bringing actions against the infringer. The draft Directive stipulates "that actions for the application of the measures, procedures and remedies provided for in this Directive may be brought within at least one year", which is the position already adopted in Spain. However, the original draft Directive and the Spanish law do not apply the same criteria when referring to the expiration date. The Commission's draft of the Directive stated 6 years after the date on which the applicant became aware, or had reason to become aware, of the last fact giving rise to the action; whereas the Spanish regulations establishes 3 years.
- Article 9 of the draft Directive requires Member States to enable the competent judicial authorities to order any of the following measures (each of which are also applicable under the Spanish Civil Procedural Act):
- the cessation of or, as the case may be, the prohibition of the use or disclosure of the trade secret on an interim basis;
- the prohibition to produce, offer, place on the market or use infringing goods, or import, export or store infringing goods for those purposes;
- and/or the seizure or delivery of the suspected infringing goods, including imported goods, so as to prevent their entry into or circulation within the market.
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.
- Article 13 of the draft Directive establishes the formulae to be applied by the authorities to set the minimum amount of damages, on the basis of royalties or fees which would have been due if the infringer had requested authorization to use the trade secret in question.
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
Senior Associate, Spain