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  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Angolan law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including trademarks, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including designs, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Trade secrets

Nature of right

Angola

Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

Argentina

Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

Australia

Trade secrets are treated as "confidential information" and can be protected through a breach of confidence claim.

Such a claim can be brought if:

  • The information can be identified with specificity
  • The information was confidential
  • There was an obligation of confidence on the defendant
  • The defendant used the information without the plaintiff’s consent and to their detriment

Austria

Trade secrets as such are not recognized as an intellectual property asset in Austria, even though their protection is ensured by general statutory acts. The stride of the European Union towards a consolidated legal regime regarding intellectual property, in particular EU-Directive 2016/943, saw further protection of trade secrets be implemented into the Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb) in late 2018.

Trade secrets are defined as information that is

  1. secret, in the sense that it is not known or readily accessible by persons that normally deal with the kind of information in question,
  2. of commercial value because it is secret, and
  3. subject to reasonable steps to be kept secret.

Criteria (i) and (ii) align with the former jurisprudence concerning trade secrets, while (iii) presents a new requirement that must additionally be proven. “Reasonable steps” may include specific IT-security measures or the practice of making secret information only accessible to especially trustworthy employees.

Following the new definition a variety of information may be considered a trade secret; ranging from inventions and designs that may be protected on their own right to not otherwise protected information such as production processes, customer data, business models, big data analysis and market development.

Belgium

A definition has been inserted into Belgian law as a transposition of Directive 2016/943 of the European Parliament and of the Council on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure gets implemented, by the Act of July 30, 2018. A new Title 8/1 has been inserted in Book XI of the Code of Economic Law in order to implement the main provisions of EU Directive 2016/943.

The general definition of a trade secret has been transposed from the Directive into article I.17/1 of the Code of Economic Law:

"Trade secret: information which meets all of the following requirements: (a) it is secret in the sense that it 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; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

Under Belgian law, a distinction must also be made between so-called "manufacturing secrets" (or secrets de fabrique), of which the illegitimate disclosure by employees and former employees is sanctioned by criminal law (under Section 309 of the Criminal Code), and confidential information in general.

In order to assess whether a third party acts unlawfully, another distinction should be made between disclosure and use of the information, as well as between acts committed in good faith and acts conducted in bad faith.

Brazil

Trade secrets are not protected as property in Brazil. However, the Brazilian Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

Canada

A trade secret, or confidential information, is any information that is not publicly available and gives the holder an advantage over others. A trade secret (or know-how) can be any type of information, whether commercial, technical or financial.

Chile

Trade secrets are defined as any knowledge about industrial products or procedures, the maintenance of which provides its possessor with an improvement, advance or competitive advantage. The unlawful acquisition of a trade secret, its disclosure or exploitation without the owner's authorization and the disclosure or exploitation of trade secrets to which access has been lawfully gained under a duty of secrecy constitutes a violation, provided that it has been effected for the purpose of obtaining an advantage for the acting person or for a third party, or with the intention of harming the holder of the trade secret.

China

The PRC Anti-Unfair Competition Law, which was recently amended and became effective as of April 23, 2019, defines a "trade secret" as technical information, operational information or other commercial information with business value; that is not known to the public; and for which the right holders have taken measures to ensure confidentiality.

It constitutes an infringement of trade secrets to obtain the trade secrets by illegal means and disclose them, use or permit others to use the trade secrets obtained by illegal means or in violation of confidentiality obligations (or to facilitate, instigate or otherwise assist others to do the same).

Colombia

Article 260 of Resolution 486 establishes that a trade secret is any non-disclosed information held by any person (legal or natural) that can be used in any productive, industrial or commercial activity and that can be transmitted to a third party as long as such information has the following features:

  • It is a secret, which means that it is not known or accessible to those who usually handle it
  • It has a commercial value due to its secrecy and
  • It is protected by reasonable measures in order to keep it secret.

Information disclosed by virtue of a legal provision or by a court order is not considered a trade secret. Information provided to an authority is not considered as such when a person supplies it to obtain license, permit, authorization, registration or any other official enactment.

The Colombian legal regime does not determine a specific manner for the transference of secret protection. For this reason, the owner must take steps to protect secret information in accordance with its features, such as:

  • Implement confidentiality policies
  • Implement training programs for employees
  • Limit access to secret information and
  • Follow procedures used to maintain private information.

Czech Republic

Trade secrets are regarded as technical or operational information that is valuable to the business, not known to the public or in relevant business circles, that confers identifiable competitive value and whose owner ensures in his or her own interest its secrecy.

Denmark

Trade secrets are defined in the Act on Protection of Trade Secrets (LOV 309 25/04/2018), Section 2. The definition of "trade secrets" is information which is secret by nature, has a market value due to the information being secret and which under the specific circumstances are subject to fair measures imposed by the person(s) controlling the information, to maintain the secrecy.

Trade secrets are not considered intellectual property rights in Danish law.

Finland

In Finland, trade secrets are protected under the Trade Secret Act, as well as through criminal law provisions in the Finnish Penal Code on the misappropriation of trade secrets. Employment legislation also includes provisions requiring the employee to refrain from disclosing confidential information of the employer.

France

As defined by EU Directive 2016/943 on Trade Secrets of June 8, 2016, a protectable trade secret is information that:

  • Is secret in the sense that it 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
  • Has commercial value because it is secret and
  • Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Germany

Trade Secrets do not enjoy the same protection as IP rights. Their legal nature is unclear, and protection is only granted against unlawful acquisition, use or disclosure. Trade secrets are therefore not protected for their content as such, but only against an "unfair" manner of obtaining them.

Hong Kong, SAR

Trade secrets and undisclosed commercial information are protected by the common law of confidence. An obligation of confidence will arise whenever the information is communicated to or acquired by a person who knows or ought, as a reasonable person, to know that the other person wishes to keep that information confidential. An industry or trade custom or practice may also impose an obligation of confidence.

Hungary

As a general rule, Act No. 54 of 2018 on the Protection of Trade Secrets provides protection for the trade secret that is being exchanged during the execution of an agreement, in case the parties fail to agree on such a provision of confidentiality themselves.

Trade secrets include any confidential fact, information and other data, or a compilation thereof, connected to economic activities, which are not publicly known in whole or in the complexity of its elements, or which are not easily accessible to other operators pursuing the same economic activities, where the proprietor of the secret has taken reasonable efforts that may be expected in the given circumstances to keep such information confidential.

India

Protection is provided to trade secrets in the form of formulae, patterns, plans, designs, physical devices, processes and know-how.

Indonesia

Under Trade Secret Law, trade secret is an information in the field of technology and/or business that is not known by the public and has economic value as it is useful in business activities, and the confidentiality of which is maintained by its owner. The owner of a trade secret is entitled to the exclusive use of the trade secret and may prohibit third parties from using or disclosing the trade secret for commercial purposes. The protection on trade secret shall include the methods of production, methods of processing (preparation), methods of selling, or other information in the field of technology and/or business that has economic value and is not known by the public in general.

Ireland

The regulation of trade secrets protects commercially valuable undisclosed know-how and business information.

A trade secret is information that:

  • Is secret (in the sense that it is not generally known or readily accessible to persons within circles that deal with such information)
  • Has commercial value because it is secret and
  • Has been subject to reasonable steps by the person lawfully in control of the information to keep it a secret

Confidential information may be protected under and subject to a number of tests in common law.

Israel

Trade secrets are defined as any business information, which is not publicly known and which cannot readily and legally be discovered by the public, the secrecy of which grants its owner an advantage over his or her competitors, provided that its owner takes reasonable steps to protect its confidentiality.

Italy

Trade secrets are defined as corporate information and technical-industrial experiences subject to the legitimate control of the owner, provided that said information:

  1. Is secret (in the sense that it is not, in its entirety or in the precise configuration and combination of the elements thereof, generally known or easily accessible to experts and operators in the relevant market sector)
  2. Has an economic value due to its confidentiality and
  3. Is subject to reasonable measures to keep it secret.

In addition to the above, data relating to experiments or other secret data may also be protected if processing them would require a considerable effort and the disclosure of that data is required in order to receive an authorization for marketing chemical, pharmaceutical or agricultural products containing new chemical substances.

The rightful holder of the trade secrets has the right to:

  • Prevent third parties from obtaining or revealing to third parties or using in an abusive manner such trade secrets, unless they were obtained autonomously
  • Prevent third parties from obtaining, revealing or using the trade secrets when they knew or should have known that they were being used illegally by a subject other than the rightful holder and
  • Prevent third parties from in any way commercializing goods that were manufactured while unlawfully exploiting the trade secrets.

The disclosure or unlawful use of trade secrets or confidential information may also constitute a breach of the principles of professional correctness.

Japan

Illicit obtainment of trade secrets and use and disclosure of trade secrets for unjustified purposes are regulated under the Unfair Competition Prevention Act (UCPA)(Act No. 47 of 1993).

The UCPA defines trade secrets under a three-prong test:

  • Information is "technical or business information useful for business activities such as manufacturing or marketing methods"
  • Information is "managed as a secret"
  • Information is "not publicly known"

Luxembourg

Since 2 July 2019, trade secrets are explicitly regulated in Luxembourg.

To respond to the need for harmonization across borders, the Directive (EU) 2016/943 of the European Parliament and of the Council of June 8, 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure brought both a common definition for trade secrets as well as more legal clarity as to the conditions guaranteeing the protection of a trade secret across the European Union.

The Law of 26 June 2019 on trade secrets ("Trade Secrets Act") has finally transposed the abovementioned directive. While trade secrets used to be defined by case law, the new law now provides a legal definition of trade secrets, thereby allowing for further legal stability.

As provided by the directive, the Trade Secrets Act defines a "trade secret" as "information which meets all of the following requirements:

  • It is secret in the sense that it 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
  • It has commercial value because it is secret
  • It has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret"

This definition is close to the definition of Section 39(2) of the TRIPS Agreement:

Reference should also be made to Section 1 (i) of the Commission Regulation (EC) 316/2014 of 21 March 2014 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements: "know-how" means a package of practical information, resulting from experience and testing which is:

  • Secret, that is to say, not generally known or easily accessible
  • Substantial, that is to say, significant and useful for the production of the contract products
  • Identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that it fulfills the criteria of secrecy and substantiality

Mexico

Trade secrets can include the nature, characteristics or purposes of the products; the production methods or processes; or to the means or forms of distribution or commercialization of the products or rendering of services.

Netherlands

Reference is made to the Dutch Trade Secrets Act 2018, which implements the EU trade secrets directive. The Trade Secrets Act defines a Trade Secret as information that is:

  • Secret, this means that it is not generally known among or readily accessible to persons within the circle that normally deal with the kind of information in question
  • Commercially valuable because it is secret
  • Subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret

A trade secret is not necessarily restricted to technical knowledge or information. Commercial information such as marketing strategies, business plans and trade information can also be considered trade secrets. The trade Secrets Act also contains measures and remedies to enforce trade secrets, such as filing for an injunction to prevent further use or disclose of a trade secret. Furthermore, the Trade Secrets Act also provides various remedies against "infringing goods."  

The Trades Secrets Act allows courts to grant the winning party a full cost award of all reasonable and equitable legal costs and other costs, similar to the full cost award in intellectual property right cases.

New Zealand

In New Zealand, trade secrets are a form of confidential information. A trade secret is information that is not generally known within the industry and that has commercial value to a business, such as formulas, recipes or business strategies. Unauthorized disclosure of trade secrets can generally give rise to a claim for breach of confidence. In certain circumstances criminal proceedings may be brought for taking, obtaining or copying trade secrets.

There is no requirement or ability to register trade secrets in New Zealand.

Norway

Trade secrets do not have a statutory definition by law, but often include information about business and operation conditions, first and foremost commercial, technical or operational information, which value is dependent on keeping such information a secret. By case law, the definition of trade secrets generally refers to company specific information, which have importance to the competitive position of the company, and which are subject of precautions to maintain its secrecy.

Philippines

The IPC specifically considers protection of undisclosed information as an intellectual property right.

Trade secrets are considered privileged information and may not be the subject of compulsory disclosure.

It has been previously decided by the Philippine Supreme Court that any determination by a company as to the confidential nature of trade secrets must have a substantial factual basis, which can pass judicial scrutiny. The Supreme Court in 2020 also issued the Revised Rules on Evidence, recognizing trade secrets as privileged information.

Poland

A trade secret is understood as technical, technological and organizational information (know-how) of an enterprise, or other information of economic value, which, as a whole or in the precise configuration and assembly of its components, is not generally known among persons who normally deal with the kind of information in question or is not readily accessible to such persons, and provided that the person entitled to use or dispose of the information (e.g. licensee) has taken, with due care, steps to maintain its confidentiality. Thus, in order to be regarded as a trade secret, the information should be confidential, not disclosed and protected. The definition of a trade secret, the forms of infringement, as well as the catalogue of available claims were recently modified (the amendments have been in force since September 4, 2018) due to the implementation of the provisions of Directive (EU) 2016/943 of the European Parliament and of the Council into Polish law.

Portugal

Trade secrets may be defined as information that is secret in the sense that it is not common knowledge or easily accessible for persons in the circles that normally deal with the type of information in question, that has commercial value based on the fact that it is secret, and that has been the object of considerable diligences on the part of the person with legal control over it in order to keeping it secret.

Romania

Legal protection is available for trade secrets holders against unlawfully acquired, used or disclosed trade secret.

Trade secrets are defined as information which (i) is secret in the sense that it 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, (ii) it has commercial value because it is secret, and (iii) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Russia

Trade secrets are defined as any company information of technical, economical, organizational, manufacturing and other nature, which:

  • Is kept secret by its holder
  • Has an economic value due to its secrecy or
  • Is subject to a commercial secrecy regime.

The disclosure or unlawful use of trade secrets is a breach of the rights to commercial secrets.

Saudi Arabia

A commercial secret is defined under the Trade Secrets Regulations as information not known in its final form or where information is not usually easily obtainable by those engaged in this type of business, as well as where the information is of commercial value due to its confidentiality, and where the rightful owner takes reasonable measures to maintain its confidentiality. However, the Trade Secrets Regulations do not protect commercial secrets which are inconsistent with Shari'a, public order and/or public morals.

Obtaining, using or disclosing any commercial secret in a manner that is inconsistent with "honest commercial practices" and without the consent of the rightful owner is deemed an abuse of the commercial secret under the Trade Secrets Regulations.

Singapore

A trade secret is information that is important to a business or company and is not known to the public. A trade secret can include a method or technique that would give a business or company an edge over its competitors.

Not all information will be considered a trade secret. The courts will look at various factors to determine if information constitutes a trade secret, such as if the information was confidential to the business, if the information has been revealed in breach of a promise of confidence and if the information has been used in an improper way that has resulted in financial damage to the business/company.

No registration procedures are required to protect a trade secret.

Slovak Republic

One of the rights belonging to an enterprise involves a trade (business) secret. A business secret comprises all the facts of a commercial, manufacturing and technical nature related to the enterprise that have actual or at least potential value, they are not readily available in the respective business circles, and they are to be kept confidential upon the will of the owner of the business secret; the owner of the business secret shall provide for the adequate protection of the business secret.

South Korea

The UCPA defines "trade secret" to mean information of a technical or managerial nature that can be used in business activities (including production or marketing methods), is generally unknown to the public, possesses independent economic value, and the secrecy of which is managed. Under the amendment to the UCPA which took effect on July 9, 2019, the reasonable effort requirement was deleted and as long as secrecy is simply maintained, the secrecy requirement will be considered met without reference to the "effort" of maintenance at all.

The UCPA defines infringement of a trade secret to include the following:

  • Acquiring a trade secret through larceny, embezzlement, coercion or other improper methods (ie, an illegal acquisition), or subsequently using or revealing an acquired trade secret (including the revelation of the trade secret to certain people while generally maintaining the confidentiality of the trade secret)
  • Acquiring a trade secret knowing (or being grossly negligent in not knowing) that it was the subject of illegal acquisition, or subsequently using or revealing a trade secret so acquired
  • Using or revealing a trade secret having learned (or being grossly negligent in not learning) subsequent to the acquisition of the trade secret that it was the subject of an illegal acquisition
  • Using or revealing a trade secret in breach of a contractual or other obligation to maintain that trade secret for purposes of acquiring an improper benefit or harming the owner of the trade secret
  • Acquiring a trade secret knowing (or being grossly negligent in not knowing) that the trade secret had been revealed in the manner set out above, or that the trade secret had otherwise been the subject of such revelation, or subsequently using or revealing a trade secret so acquired
  • Using or revealing a trade secret having learned (or being grossly negligent in not learning) subsequent to the acquisition of the trade secret that the trade secret had been revealed in the manner set out above, or that the trade secret had otherwise been the subject of such revelation 

Under the amended UCPA which became effective on July 9, 2019, courts are authorized to award damages as a punitive measure of up to three times the amount of actual damages for intentional or willful acts of trade secret misappropriation.  

Spain

Trade secrets are protected by restricting any unauthorized use and access thereto, both through civil proceedings under the Trade Secrets Act 1/2019, the Unfair Competition Act as well as criminal proceedings under the Criminal Code.

Sweden

The right serves to protect information about business or operating conditions in a trader's business which the trader keeps secret and whose disclosure is likely to cause harm to the trader in terms of competition.

The law applies only to unauthorized attacks on trade secrets.

Switzerland

Trade secrets do not constitute a category of property rights, but are rather protected to a certain extent by unfair competition law, contract law and criminal law.

Taiwan, China

According to the Trade Secrets Act, a trade secret shall mean any method, technique, process, formula, program, design or other information used in the course of production, sales, or operations that meets all of the following requirements:

  • It is not generally known to persons in the relevant industry
  • It has economic value, actual or potential, due to its secretive nature
  • Its owner has taken reasonable measures to maintain its secrecy

Ukraine

The Ukrainian law provides that a trade secret is information that is secret in the sense that it is not, as a whole 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, has commercial value because it is secret and has been subject to reasonable steps under the circumstances by the person lawfully in control of the information to keep it secret.

Certain information which includes, inter alia, the information on charter documents and tax payments shall be not protected as commercial secret in Ukraine by virtue of law.

A trade secret is in the exclusive ownership of the person that classified such information as a trade secret.

The owner of the trade secret has the exclusive right to use the trade secret as well as prohibit the third parties from such use.

United Arab Emirates

Article 905 of the Civil Code provides that employees must not disclose industrial or trade secrets of their employer, even after the expiration of their employment contract, in accordance with custom or the timeframe specified in their employment contract.

Under Article 379 of the Penal Code, an employee who is entrusted with a secret by virtue of their trade, position, profession or art and who discloses that secret, or uses that secret for personal gain, is liable and may be ordered to pay penalties (see below).

Article 120 of the Labor Law also allows an employer to dismiss an employee without notice if they reveal any secrets of the establishment in which they have been working.

Article 127 of the Labor Law indirectly protects intangible assets in the form of confidential information (eg, clients and business secrets) by permitting an employer to include a restrictive covenant in the contract of employment. Employees can be subject to a ban on working for a competitor within a specified location, business and period although great care should be taken in drafting to ensure that the terms are reasonable. Such clauses are usually enforced by an action in damages and as such, liquidated damages clauses are often coupled to the restrictive covenant. The Civil Code states that liquidated damages clauses attached to restrictive covenants must not be “exorbitant” and this is usually linked to both the realistic losses but also the ability of the employee to pay any award.

United Kingdom

The status of trade secrets as an item of property is not clear; the more generally accepted view is that trade secrets are not property. However, trade secrets may be protected either through a breach of contract action, where a non-disclosure agreement exists or can be implied, another obligation of confidentiality, or a common law action for breach of confidence.

A common law action for breach of confidence is based on the principle that, for information received in confidence, a person cannot take unfair advantage of that information or prejudice the person giving the information. The same principle applies both in Scotland and in England.

To qualify, information must have the "necessary quality of confidence" and must be "disclosed in circumstances importing an obligation of confidence," eg, imposed by contract, implied by the circumstances of disclosure, or implied due to the relationship between the parties, such as employer/employee. However in employer/employee relationships in particular, there are limits as to how far information can be protected after termination of the relationship (information must be confidential to a sufficiently high degree, with highly confidential trade secrets possibly being protected indefinitely). 

In May 2016, the European Council adopted the EU Trade Secrets Directive, which EU member states (including the UK) were required to implement by May 2018. The Directive was implemented in the UK through the Trade Secrets (Enforcement, etc.) Regulations 2018, although these do not significantly change existing case law.

The Directive defines a trade secret as information that:

  • Is secret (ie, not generally known or readily accessible to persons within circles that deal with such information)
  • Has commercial value as it is secret
  • Has been subjected to reasonable steps by the person in control to keep it a secret

The meaning of "reasonable steps" will be developed as the courts apply this law. Labelling something a trade secret is unlikely to be enough of itself.

The Directive prevents unlawful acquisition, use or disclosure of trade secrets (including unauthorized access). "Unlawful" requires the act to be unauthorized, or contrary to honest commercial practices.

United States

On May 11, 2016 the Federal government enacted the Defend Trade Secret Acts (DTSA). The DTSA provides a federal claim for misappropriation of trade secrets. Until then, trade secrets had been protected only at the state level, with all states, other than New York, adopting their own version of the Uniform Trade Secrets Act (UTSA).

States adopting the Uniform Trade Secret Act (UTSA) impose liability for improper acquisition of trade secrets; use or disclosure of a trade secret is not required for liability, though additional damages can accrue.

The UTSA defines trade secrets under a two-prong test:

  • "Information, including a formula, pattern, compilation, program, device, method, technique or process, that derives actual or potential economic value from not being known and not being readily ascertainable by proper means by others"
  • Such information is subject to "reasonable efforts by the owner to maintain its secrecy"

The Restatement of Torts (Section 757) defines a trade secret as follows: "a trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it." States adopting the Restatement of Torts approach require unauthorized use or disclosure for liability to accrue.