The provisions amending the Act on Fair Trading,
which introduced a number of significant changes
with regards to the issue of protecting trade
secrets, came into force on 4 September 2018. The
amendment also changed the existing legal
regulations regarding the employer’s protection
against infringement of trade secrets by employees.
The amendment implements Directive (EU) 2016/943 of the European Parliament and of the
Council of 8 June 2016 on the protection of
undisclosed know-how and business information
(trade secrets) against their unlawful acquisition,
use and disclosure (OJ L No. 157, p. 1)
(“Directive”).
The Directive was adopted following a nearly 5-year
period of work carried out by the European Union
bodies and it aims to harmonise the provisions on
standards for the protection of the undertaking’s
confidential information. In the light of the
provisions of the Directive, new regulations are
intended to promote the establishment of a
minimum standard in terms of the principles of
protection of the undertaking’s confidential
information as a tool for managing competitiveness
and innovation.
The most important change resulting from the
implementation of the Directive is the new wording
of the provision of Article 11 of the Act on Fair
Trading, which defines a “trade secret”. The new
regulations extended this concept in relation to the
previously applicable regulation. Pursuant to the
new wording of Article 11(2) of the Act on Fair
Trading: “a trade secret is understood as technical,
technological, organisational or other information
having an economic value that is not, as a body or
in the precise configuration and assembly of its
components, generally known among, or readily
accessible to, persons within the circles that
normally deal with the kind of information in
question as long as the person authorised to use or
dispose the information has taken reasonable steps
under the circumstances to keep it secret.” This
definition fully reflects the content of Article 2(1)
of the Directive.
The amendment to the Act on Fair Trading resulted
in the amendment to the provision of Article 11(2),
which, under the previous legal regime, explicitly
provided for the employee’s liability for the
infringement of a trade secret, and the employee
was required to hold in confidence information
constituting a trade secret of his or her employer
for a period of three years from the date of
termination of the employment relationship with
the employer. As per the explanatory memorandum
to the bill, by repealing this provision the legislator
sought to remove time restrictions relating to the
protection of a trade secret due to the fact that
the above-mentioned three-year period was
considered too short to afford full protection to entrepreneurs. As also indicated in the explanatory
memorandum to the bill amending the Act on Fair
Trading, the removal of the time restriction
relating to the protection of a trade secret also
results from the fact that the Directive imposes no
time or subjective limits on the protection of a
trade secret.
However, according to some views of the doctrine
and practice, the above amendment to Article 11(2)
of the Act on Fair Trading has caused an effect
contrary to the one the legislator had intended
since it removed the only provision of the Act that
explicitly provided for employees’ liability for the
infringement of a trade secret. It should be noted
that under the current legal regime, only an
entrepreneur could, as a rule, be held liable for an
act of unfair competition. The previous content of
Article 11(2) of the Act on Fair Trading was
explicitly extending the scope of application of the
Act to employees (for a period of three years).
Certain commentators are of the view that,
contrary to the legislator’s intentions, the
amendment to Article 11(2) of the Act on Fair
Trading has led to a situation where, under the
current legal regime, employees’ liability for the
infringement of a trade secret is completely
excluded.
However, such an interpretation appears to be too
far-reaching and runs counter to the intention of
the European legislator and the explicit provisions
of the Directive, which does not introduce any
subjective limitations of liability for the
infringement of a trade secret. Pursuant to Article
2(3) of the Directive, a “trade secret infringer”
means “any natural or legal person who has
unlawfully acquired, used or disclosed a trade
secret.” The above discrepancy between the
content of national provisions and the explicit
regulation of the Directive results from a legislative
error that should be remedied in another
amendment to the Act on Fair Trading so as to
remove doubts as to employees’ liability for the
infringement of the employer’s trade secret.
Consequently, considering that the new legislation
also applies to employees, it is assumed that, under
the current legal regime, an employee has an
indefinite obligation to hold in confidence
information constituting his or her employer’s trade
secret.
Given the above doubts, it is particularly important
that an entrepreneur guarantees contractual
protection of its information that has a special
economic value for it by entering into
confidentiality agreements with employees.
Furthermore, an employer should consider
amending the existing agreements by introducing
an indefinite obligation (instead of a three-year
obligation) to hold the employer’s trade secret in
confidence.
The amendment to the Act on Fair Trading has also
introduced legal protection for whistleblowers.
Pursuant to the new provision of Article 11(8) of the
Act on Fair Trading: disclosure, use or acquisition of
information constituting a trade secret does not
constitute an act of unfair competition where it
occurred in four specifically described cases, i.e.:
- to protect a legitimate interest protected by
law, - to exercise the right to freedom of expression,
- to reveal misconduct, wrongdoing or illegal
activity for the purpose of protecting the
general public interest, or - where disclosure of information constituting a
trade secret by employees to their
representatives as part of the exercise of their
functions in accordance with law was necessary
for that exercise.
If an employee demonstrates that the trade secret
has been infringed in the aforementioned
circumstances, he or she will not be held liable for
committing an act of unfair competition.
MILLER CANFIELD
W. BABICKI, A. CHEŁCHOWSKI I WSPÓLNICY SP.K.
ul. Batorego 28-32
81-366 Gdynia
Tel. +48 58 782-0050
Fax +48 58 782-0060
gdynia@pl.millercanfield.com
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Tel. +48 22 447-4300
Fax +48 22 447-4301
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53-125 Wrocław
Tel. +48 71 780-3100
Fax +48 71 780-3101
wroclaw@pl.millercanfield.com
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certain recent legal developments of selected areas of law. For this reason the information contained in this publication should not form the basis of any
decision as to a particular course of action; nor should it be relied on as legal advice or regarded as a substitute for detailed advice in individual cases.
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