The Trade Secrets Act, Chapter 589 of the Laws of Malta transposes EU Directive 2016/943/EU on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure into Maltese law.
Trade secrets are an important tool in the arsenal available to right-holders to protect their proprietary information and intellectual property.
What is a trade secret?
The term ‘trade secret’ is defined as 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.
What rights are afforded?
The acquisition, use or disclosure of a trade secret without the consent of the trade secret holder shall be considered unlawful.
This also includes, amongst others, the production, import, export, storage, offering or placing on the market of infringing goods.
Precautionary acts
In addition to requesting the competent court to issue precautionary acts against the alleged infringer, such as, the cessation of the use of a trade secret on a provisional basis pending the outcome of the proceedings, upon request and as an alternative to the aforementioned, the competent court may 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.
Corrective measures
Where a judicial decision is taken on the merits of the case finds that there has been unlawful acquisition, use or disclosure of a trade secret, the competent court may, at the request of the applicant order a number of corrective measures against the infringer, including (a) the cessation of or, as the case may be, the prohibition of the use or disclosure of the trade secret; (b) 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 (c) the destruction or withdrawal of the infringing goods from the market.
Damages
The competent court may, upon the request of the injured party, order an infringer who knew or ought to have known that he, she or it was engaging in unlawful acquisition, use or disclosure of a trade secret, to pay the trade secret holder damages appropriate to the actual prejudice suffered as a result of the unlawful acquisition, use or disclosure of the trade secret.
Sanctions
Any person who fails to comply with any measure adopted pursuant to the Trade Secrets Act, such as any precautionary measures imposed by the competent court, is liable to a penalty of not more than one hundred fifty thousand euro (€150,000).