No presumption of urgency for injunctions in the area of the new Secrecy Protection Act
In a recently published decision, the Higher Regional Court Munich for the first time deals with the injunctive relief according to Sec. 6 German Trade Secret Act (GeschGehG), dressed in an application for a temporary injunction, and the aspect of urgency (order of 08.08.2019 – 29 W 940/19).
An agency for medical professionals (Applicant) had filed a motion for an injunction at the Regional Court Munich I on basis of Sec. 6 GermanTrade Secrets Act. Background of this injunction was that a former employee of Applicant had copied Applicant’s address book before she left the company. Applicant argued that employee had made the copy on 19 February 2019 of which Applicant’s managing director gained knowledge on 17 June 2019.
After Applicant had requested from employer of the employee out of court to submit a cease-and-desist letter by a letter of its lawyer dated 04 July 2019 but Opponent announced an answer only on 19 July 2019, Applicant filed its motion for a preliminary injunction by which Opponent should be prohibited to use and/or duplicate the address book. By order of 16 July 2019, court pointed out that the motion had to be concretized by the addresses contained in the address book and set a deadline of one week for the concretization. The order was served by attorney’s electronical mailbox (“beA”) on 19 July 2019 to a partner of Applicant’s representative – who was not the person handling the case – and forwarded to the attorney in charge on 22 July 2019, who, however, was on vacation until 24 July 2019.
Applicant did not submit an amended motion by 26 July 2019. By order of 29 July 2019, the court rejected the motion for a temporary injunction due to lack of urgency.
Applicant filed an immediate appeal against this.
Legal Assessment of the Higher Regional Court Munich
The Munich Higher Regional Court rejects Applicant’s immediate appeal.
In court’s opinion, the presumption of urgency of Sec. 12 (2) German Unfair Competition Law (UWG) cannot be applied analogously. While the legislator has included a presumption of urgency in the trademark law in Sec. 140 German Trademark Law (MarkenG) in close temporal relation to the legislative procedure to the German Trade Secret Act, it has refrained from this in the German Trade Secret Act. At the same time, however, the German Trade Secret Act contains provisions concerning other procedural issues. Accordingly, it cannot be assumed that there is an unintended oversight by the legislator or a comparable situation of interest. For the decision itself, court left this open.
Court then examines the question of urgency and denies it, since Applicant’s representatives have acted in a way that is detrimental to urgency by failing to meet the deadline set for them to submit a concretized motion.
In this respect, it does not matter whether the court order was served to the attorney in charge or not, since, according to the motion, the entire law firm itself was named as Applicant’s representative.
The conduct of the representatives which is attributed to Applicant pursuant to Sec. 85 (2) German Code of Civil Procedure (ZPO) was detrimental to urgency. The attorney in charge did not become aware of the order until 25 July 2019 when he returned from his vacation. Ony from this moment on this urgent case was dealt with so that no precautions had been taken to ensure that the case was dealt with properly while the attorney in charge was on vacation. There are also no other obvious reasons why the concretized motion could not be submitted within the set deadline of one week; in particular, Applicant cannot successfully argue that the attorney in charge could not consult the court by telephone within the deadline with regard to the method of submitting the address book.
Finally, in continuation of the case-law of the Federal Constitutional Court on ex parte injunctions, court states that it may be dispensable to hear Opponent not previously involved in the injunction proceedings before a decision is made on Applicant’s immediate appeal against a decision rejecting the application if the immediate appeal itself remains unsuccessful. However, it may then be necessary to announce the decision rejecting the immediate appeal to Opponent in order to take account of the constitutional requirement of equality of arms also with regard to possible future proceedings.
The decision shows how important trade secrets and their possible enforcement are. Our partner Alexander Haertel has already held many presentations on this subject in the past and only recently at the autumn seminar of the Federal Association of Patent Attorneys in Dresden. Associate Dr. Benjamin Pesch’s doctoral thesis inter alia deals with the protection of trade secrets according to sec. 17 Unfair Competition Act. However, the decision also shows that many questions in connection with the new Trade Secrets Act have not yet been clarified. The subject of this decision was, among other things, the questions of the analogous application of Section 12 (2) UWG. In very general terms, court still raises the question of what happens if the infringer obtains the trade secret under the old law (UWG) while the use is made under the new law. In the absence of transitional provisions, there is no clear answer here. The Munich Higher Regional Court also raises the question of what degree of substantiation is needed for the question of indirect infringement under § 4 (3) Trade Secrets Act, namely the case where a third party (in this case Opponent) receives the trade secret from the employee. Should the Opponent have known that it was a trade secret and that the employee was not entitled to possess and use it? In this case, an explicit submission by the Applicant is necessary.
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