– Act 1/2019, published on February 21, 2019, in force since March 14, 2019. The Act transposes EU Directive 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

– Paris Convention for the Protection of Industrial Property, Stockholm Act of July 14, 1967, in force since 1974.
– WTO's TRIPS Agreement, in force since January 1, 1996.

Definition: a trade secret is any information (1) which is secret in the sense that it is not, as a whole or in the precise configuration and assembly of its components, generally known to, or readily accessible by persons within the circles in which the type of information in question is normally used; (2) has a commercial value because of its secrecy; and (3) has been the subject of reasonable steps, in the circumstances, to keep it secret, taken by the person lawfully in control of it. Further, the Law considers trade secret as any information or knowledge, including technological, scientific, industrial, commercial, organizational or financial, that complies with a series of characteristics.

Assignment - licensing: possible. Under Spanish Law whoever transfers a trade secret for valuable consideration or grants a license will be liable, unless otherwise agreed to the acquirer, for the damages caused to him, if it is subsequently declared that he lacked the ownership or the necessary powers to carry out the trade. He will always respond when he has acted in bad faith. Further, trade secrets may belong pro indiviso to several people. In the absence of an agreement between the parties, each of the participants alone may: (1) exploit the trade secret after notifying the other co-owners; (2) perform the acts necessary for the preservation of the trade secret as such; (3) exercise civil and criminal actions in defense of the business secret, but must notify the other co-proprietors, so that they may join. The assignment of the trade secret or the granting of a license to a third party to exploit it must be granted jointly by all the participants.

Remedies for misappropriation: as in the patent regime, there are two main civil remedies: (1) the cessation or the prohibition of the acts of violation of the trade secret; (2) the compensation for damages if there has been fraud or negligence on the part of the infringer. Furthermore, interim, or precautionary measures can be granted under a regime identical to the one of patents. Regarding liability, the Law establishes three potential infringers: obtaining, using, or disclosing a trade secret is considered unlawful when the person performing it, at the time of doing so, knows also when, under the circumstances of the case, should have known that he was obtaining the trade secret directly or indirectly from the person using or disclosing it in an unlawful manner. But, even in case the alleged infringer should not have known, it will be considered liable of disclosure or use of trade secrets. However, the liability will be reduced to the payment of a pecuniary compensation. This pecuniary compensation shall not exceed the amount that would have been payable to the trade secret holder for the grant of a license that would have allowed the use of the trade secret during the period in which its use could have been prohibited. Finally, actions for the defense of trade secrets are barred by the statute of limitations after three years from the time when the entitled party became aware of the person who violated the trade secret. In the criminal field, there is a crime of violation of trade secrets regulated in Article 279 of the Penal Code. The crime of violation of trade secrets consists of the dissemination, disclosure or transfer of secrets by a person who has a legal or contractual obligation to keep them confidential. The basic type is punishable with a prison sentence of two to four years and a fine of twelve to twenty-four months.

Comments: establishing a Trade Secrets Protection plan is highly advisable. It could be part of the IP Strategy of the company as well as part of the compliance program. This will help to properly protect trade secrets of the company and prevent potential claims from third parties.