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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy 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 work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

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

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially 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

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    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.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Trade secrets

Remedies for infringement

Argentina

Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

Australia

Remedies for a breach of confidentiality in trade secrets include the equitable remedies of injunctions, imposition of a constructive trust, delivery-up, equitable compensation and an account of profits, in addition to usual remedies for breach of contract where relevant.

In determining the severity of the remedy, the court may take into account the advantage given to the defendant when they acquired and exploited the plaintiff's trade secrets.

Austria

Civil remedies include:

  • Cessation of infringement (preliminary or permanent injunction)
  • Monetary relief

Criminal remedies include:

  • Monetary fine
  • Imprisonment

Additional remedies are available under the Act on Unfair Competition.

Belgium

Actions for misappropriation can be brought in criminal and civil proceedings, on the one hand, and in contractual liability and liability ex delicto on the other hand. In principle, both (interim and final) injunctive and monetary relief can be obtained.

The implementation of Directive 2016/943 in Title 8/1 of Book XI of the Code of Economic Law ensures that the competent judicial authorities may, at the request of the trade secret holder, order a number of provisional and precautionary measures against the alleged infringer, such as the cessation of or the prohibition of the use or disclosure of the trade secret on a provisional basis; and/or the prohibition of the production, offering, placing on the market or use of infringing goods, or the importation, export or storage of infringing goods for those purposes; and/or the seizure or delivery up of the suspected infringing goods, including imported goods, so as to prevent their entry into, or circulation on, the market; or, as an alternative to the aforementioned measures, make the continuation of the alleged unlawful use of a trade secret subject to the lodging of guarantees intended to ensure the compensation of the trade secret holder. In addition, in a court proceedings on the merits of the case, a series of injunctive and corrective measures can be sought, as well as damages and dissemination of the information concerning the decision.

Brazil

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).

Canada

A party can seek breach of contract, or breach of confidence at common law. The tort of intentional interference with economic relations may also be available.

Remedies can include an injunction for actual or threatened misappropriation, delivery up or destruction of materials made as a result of using confidential information, imposition of a constructive trust over property acquired through misuse of confidential information, damages (including actual loss and unjust enrichment caused by the misappropriation) or an accounting of profits. Imposition of reasonable royalties instead of injunction is permitted under exceptional circumstances.

Punitive damages may be available where the infringement is particularly egregious or appalling.

In Canada, criminal penalties for theft are not available with respect to the intangible information but may be available with respect to theft of a tangible object that contains confidential information.

Chile

No text yet.

China

In case of infringement of trade secrets, the rights owner can either file a complaint with the local administrative authority or bring a lawsuit to the People's Court.

The local administrative authority may order the infringer to cease the infringing activity immediately and impose a fine up to ¥5 million. In respect of the infringing products, the infringer shall return the materials containing trade secrets or destroy the products manufactured based on the trade secrets unless the rights owner agrees to repurchase the products or dispose of them by other means.

Injunctive relief is available.

Colombia

Resolution 486 states that the mechanisms to protect trade secrets are actions that tend to condemn Unfair Competition, which are contained in article 20 of the Law 256 dated 1996. In this regard, the owner is allowed to claim its rights and seek for the corresponding indemnification against those, who disclose the information without prior authorization, and use it on unfair competition acts.

Attorney General may initiate an unfair competition action ex officio if the action affects the public order. Finally, the owner may claim the protection of its right before the Andean Court of Jurisdiction of the CAN, in the event in which the national authorities do not provide such protection.

Czech Republic

Damages can include actual loss and unjust enrichment caused by misappropriation.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Denmark

An interim injunction can be granted.

An equitable remuneration for illegal acquisition, use or passing on of a trade secret can be awarded. The equitable remuneration may be based both on the loss incurred by the owner of the trade secret and on the profit of the offending party. 

Compensation for non-economic damages can be awarded.

The damages are intended to compensate for the injury.

Criminal penalties are possible.

Finland

In case of an infringement, the owner of the trade secret may proceed by either claiming for damages or injunction based on the Trade Secrets Act, or by filing a criminal claim regarding trade secret misappropriation.

Information regarding trade secrets can be removed from public court documents and the access of public audiences can be limited to public proceedings if it is required for the sake of ensuring secrecy.

France

Following transposition of the Directive, several remedies for trade secret infringement are available under French law, namely the incurring of the civil liability of the trade secret infringer. The French Commercial Code now contains a series of corrective measures (eg, injunction banning or ordering to cease the use and or disclosure of trade secrets), provisional and protective measures, publication measures and compensation. Those measures can be sought by way of an action on merits or by way of a summary action, namely in case of imminent infringement.

Remedies may include banning the manufacturing, marketing and/or use of the goods which significantly result from a trade secret infringement or the import, export or storage of such products, as well as the partial or total destruction of any document, object or file containing the infringed trade secret.

In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into account distinctively:

  • The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the trade secret holder, inclusive of loss of opportunity
  • The moral harm suffered by the trade secret holder
  • The profits earned by the infringer, including intellectual, tangible and promotional investments saved or not incurred by the infringer

As an alternative and upon request of the trade secret holder, French courts may set the damages as a lump sum. This amount is not exclusive of compensation for moral harm caused to the rights holder.

In case of dilatory or abusive actions, French courts can order the trade secret holder to pay a civil fine and/or even be liable for damages for dilatory or abusive actions.

Germany

Remedies foreseen by the draft act include injunction and damage claims. Damage claims may – similar to most other IP Rights in Germany – be calculated as adequate license fees, infringer's profits or lost profits of the rights holder. In order to calculate damages, the rights holder can ask for a rendering of accounts.

Besides that, trade secret owners may make a claim for recall and destruction of "infringing products," ie, of goods which significantly benefits from trade secrets unlawfully acquired, used or disclosed.

Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by the German law.

Beside the consequences under civil law, the unlawful acquisition, use or disclosure of a trade secret might incur criminal liability.

Hong Kong

The remedies available for breach of confidence include injunctions, damages, an account of profits and delivery up of materials containing confidential information.

Hungary

According to Hungarian law it is a criminal offense if a person illegally acquires, uses, or discloses a business secret for financial gain or advantage, or makes it available to others or publishes such information, causing pecuniary injury to others.

Act LIV of 2018 on the Protection of Trade Secrets also contains special remedies, eg, a person whose trade secrets have been violated, among others, shall have the right to demand:

  • A court ruling establishing that there has been an infringement of rights
  • The cessation of or the prohibition of the use or disclosure of the trade secret
  • Destruction of the infringing goods or their withdrawal from the market
  • The termination of the injurious situation and the restoration of the previous state
  • Restitution of the economic gains achieved through infringement

In the event of infringement of the right to trade secrecy, the proprietor of the trade secret may also demand compensation in accordance with the provisions of civil liability.

It is also common in Hungary to include a chapter into the contracts stipulating a confidentiality agreement, which would set out the amount of compensation (penalty) the breaching party has to pay in case of violation.

India

Infringement of trade secrets would amount to breach of contractual obligations. A party may obtain an injunction, compensation and return or destruction of all confidential and proprietary information.

Indonesia

Compensation, injunction or a combination of the two may be ordered by the District Court as remedies for infringement. Criminal sanctions are in the form of imprisonment and/or fine. There is only one criminal provision under the Trade Secret Law.

Ireland

The primary remedies available to in relation to trade secrets for infringement:

  • An order restraining any relevant person from disclosing any trade secret or alleged trade secret
  • An order implementing measures to preserve confidentiality of any trade secret or alleged trade secret
  • A compensation order for damages and/or
  • An order for cessation, prohibition or destruction

Criminal fines and penalties are also possible in certain cases.

Israel

Misappropriation of one's trade secret is a civil tort that may entitle the plaintiff to several types of remedies, for example: injunction and monetary compensation, including statutory damages of up to ILS 100,000 (approximately US$27,500) without having to prove that damages were caused.

Italy

Any person having reason to fear for the infringement of rights belonging to him, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that his right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, such as injunction and compensation for damages.

Criminal penalties may also apply under certain circumstances.

Japan

Monetary damages can be levied. There are certain statutory presumptions to calculate damages but punitive damages are not available.

Injunctive relief is available as a remedy.

Criminal penalties are available for theft and use of trade secrets.

Luxembourg

Civil remedies for misappropriation of trade secrets include:

  • Injunction (cease and desist order; ordinary action and interim relief)
  • Publication of judgment
  • Damages (for both losses suffered and loss of profits)
  • Restraint measures, such as a penalty for future breach of the Court's order, ordinary action and interim relief

Reference should also be made to the possibility of obtaining a search order to search the premises and computer in order to find misappropriated data.

Criminal remedies include:

  • Monetary fines
  • Imprisonment (natural persons)
  • Confiscation of goods used to commit the offence
  • Exclusion of public procurement markets (companies)
  • Dissolution of company (companies)

Mexico

Violation may lead to the payment of damages and losses, which shall be determined by a court of law based on actual damage and loss.

Criminal penalties may be imposed.

Netherlands

There can be criminal and civil proceedings for trade secret misappropriation. In principle, both (interim and final) injunctive and monetary relief can be obtained.

New Zealand

The main remedies for infringement available are damages, accounts of profits and injunction. There is also the possibility of punitive damages if the conduct of the defendant is deserving of condemnation.

Criminal penalties are possible under certain circumstances.

Norway

In case of an infringement, the owner of the trade secret may proceed by either claiming for damages or injunction based on the Marketing Act, or by filing a criminal claim.

Poland

A party whose interests and rights are infringed by the disclosure of trade secrets may take action against the infringer, demanding that it cease its unlawful actions (using the trade secrets in its business), pay damages – on the basis of the general provisions of Polish law or by the payment of a lump sum equal to the value of the license fee, return unfairly gained profits, redress the effects of the infringement and publish certain statements in this regard, including information on the court judgment or information on its content. The court may also order the destruction of products and other things that are directly connected with the infringement. In such cases, the court may grant a preliminary injunction to be effective while it is considering the main claim.

Conduct which leads to an infringement may include the unlawful disclosure, use or acquisition of a trade secret. 

Polish law also provides criminal liability for the infringement of trade secrets. This was recently modified to cover the disclosure or use of trade secrets by persons who became acquainted with them in connection with participation in court proceedings concerning unfair competition related to a trade secret or in connection with reading the files of such proceedings – provided that the court ordered that the proceedings be confidential.

The same rules as in patent infringement cases apply with regard to the court order concerning costs of the proceedings.

Portugal

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

In case of trade secrets, the court shall take in consideration, notably, the value of the secret or other specific characteristics of the secret, the measures taken in order to protect it, the behavior of the infringer, the impact of the illegal use or disclosure, as well as the legitimate interests of the parties, third parties and public interest and the safeguard of fundamental rights. The judicial decision may impose to the infringer:

  • The termination or, depending on the case, the prohibition of use or disclosure of the trade secret
  • The prohibition of producing, offering, placing on the market or use of the products in infraction, or the importation, exportation and storage of products in infraction to such purposes

Whoever illegally violates trade secret rights of another person with intent or by negligence is 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 will take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne with the 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.

If it is impossible to quantify the losses effectively suffered by the injured party, the court may, provided this is not opposed by the injured party, alternatively define a fixed amount with recourse to equity that is based, as a minimum value, on the remuneration that the injured party would have received if the infringer had requested authorization to use the industrial property rights in question and the costs borne with the protection of the industrial property right and the investigation and termination of the harmful conduct.

The unlawful acquisition, use or disclosure of trade secrets (ie, without the consent of the trade secret holder) is punishable with a fine between €5,000 and €100,000 if the infringer is a legal person, and from €1,000 up to €30,000 if the infringer is a natural person.

Trade secret violation or undue use may also be criminally punished with imprisonment up to 1 year or a fine.

Romania

Damages can include actual loss and loss of profit.

Statutory attorneys' fees can also be awarded.

Disclosure, acquisition or use of commercial secrets by third parties as a result of commercial or industrial espionage is considered a criminal offense punishable with imprisonment or criminal penalties provided that the interests of the trade secrets holder are affected. Thus, seizures of property connected with the trade secrets are possible.

Russia

The owner of the trade secret is entitled to demand to redress damages in full. Criminal penalties may also apply under certain circumstances.

Saudi Arabia

Remedies include a claim for compensation for damages for any person harmed as a result of a violation of the provisions of the Trade Secrets Regulations.

Singapore

When a trade secret is leaked, an action may be taken for breach of confidence as a leak of the secret may be unfair to the business and may have harmful consequences. Remedies for breach of contract will be available if appropriate.

Slovak Republic

The owner of a business secret is legally protected from any interference or threat to his/her rights related with business secrets.

South Korea

Trade secret misappropriation in violation of the UCPA is punishable by up to 5 years of imprisonment or a fine of at least twice (not to exceed 10 times) the pecuniary amount gained from such acts. The penalty is aggravated in case the trade secret is used overseas or disclosed to a third party knowing that such trade secret will be used overseas (maximum 10 years of imprisonment, the fine is the same as above). In addition, the employer (company or an individual) of an employee who committed acts in violation of the law is vicariously liable unless the employer can prove that it was not negligent in preventing such act.

A person who commits illegal use or disclosure of industrial technology shall be punished by imprisonment of up to 7 years or by a fine of up to KRW700 million (US$700,000). However, in case any of the such acts are committed to "use the industrial technology overseas" or "with the purpose of using the industrial technology overseas" the penalty is increased to imprisonment of up to fifteen years or by a fine of up to KRW1.5 billion (US$1.5 million). As under the UCPA, the employer (company or an individual) of an employee who committed acts in violation of the law is vicariously liable unless the employer can prove that it was not negligent in failing to prevent such act.

Spain

The specific civil and criminal law measures are available for protection of trade secrets in Spain. A wide criminal framework is dedicated to trade secrets infringements, including against disclosure, misappropriation, use or other infringement. Criminal liability for trade secret violation under the Criminal Code, punishable by imprisonment of up to seven years in most serious cases and fines of up to 24 months.

Sweden

Liability for damages will occur for corporate espionage or unlawful dealing with a trade secret. The damages are intended to compensate for the injury.

Criminal penalties are possible.

Switzerland

Declaratory actions, actions for performance, damages and an account of profits are available remedies. There is an exception for cases where trade secrets are obtained in good faith.

Injunctive relief and publication of judgment are also available remedies in certain circumstances.

Criminal penalties are possible in some cases.

Taiwan

Available remedies:

  • Claim for damage for economic loss and non-economic loss
  • Request to stop or prevent infringement
  • Destruction or other necessary dispositions of products generated from the infringement or articles used exclusively in the infringement

In addition, criminal punishments (such as imprisonment, detention, fine and/or confiscation) are possible.

Ukraine

The trade secret owner may seek the following remedies under Ukrainian law:

  • Termination of the infringement
  • Reimbursement of damages (including loss of profit)
  • Seizure of infringing goods
  • Publication of the court decision on the case concerning IP rights infringement

Further, the Criminal Code of Ukraine dated April 5, 2001 provides for criminal liability for infringements of intellectual property right with regard to a trade secret.

United Arab Emirates

Penalties under the Penal Code include imprisonment for not less than one year and a fine of not less than AED 20,000 (approx. USD 5,450).

United Kingdom

Injunctions (or interdicts in Scotland), damages, an account of profits, and delivery up or destruction of records of confidential information illegitimately retained are possible remedies for misappropriation

United States

Damages can include actual loss and unjust enrichment caused by misappropriation. Treble damages for willful and malicious misappropriation can be awarded.

Statutory attorneys' fees can also be awarded for willful and malicious misappropriation.

Actual or threatened misappropriation can be enjoined. The imposition of reasonable royalties instead of an injunction is permitted under exceptional circumstances.

Criminal penalties are possible under certain circumstances.

Similar remedies are also available under the DTSA, as well as a process by which plaintiffs may ask courts to order the seizure of property "necessary to prevent the propagation or dissemination of the trade secret."