Implementation of the Trade Secrets Directive in France: latest developments

French law No 2018-670 issued on 30 July 2018 in order to implement the Directive on the protection of trade secrets was finally completed by the passing of French Decree No 2018-1126 on 11 December 2018.

A new decree to prevent breaches 

One of the main aspects of the Decree is the introduction of actions to prevent or end a trade secret breach.

Indeed, the Decree introduces a mechanism that is similar to the one already existing for IP infringement. New article R-152-1-I of the French commercial code provides that the judge has the power to order, in ex parte or inter parte proceedings, provisional or protective measures in order to prevent or end a trade secret breach. In particular, the judge can prohibit the performance or continuation of acts of use or disclosure of a trade secret. Also, the court has the power to prohibit acts of production, offering, marketing or use of products suspected of being the result of misuse of a trade secret, or of importing, exporting or storing such products for these purposes. Pursuant to this new article a judge can also order the seizure or return of such products, including imported products, to a third party, in order to prevent their entry into or circulation on the market in France.
Nonetheless, if the claimant does not file an action on the merits within 20 working days or 31 calendar days if the latter period is longer from the date of the order, then the effect of the provisional or protective measures will expire.

Additionally, the judge can authorize the defendant to use the alleged trade secret on condition that it provides a financial guarantee in order to indemnify the trade secret holder. Also, conversely, the judge can order the claimant to provide a guarantee in order to indemnify the defendant if the proceeding doesn’t succeed.

Preserving trade secrets

The Decree also introduces provisions in order to preserve trade secrets before the courts.

For example, a person who seeks confidentiality protection for a document whose disclosure is requested has to provide the judge with the complete confidential version of the document, a non-confidential version or a summary version of the document and also a memorandum justifying the confidentiality of each element for which the protection is required.

Furthermore, the judge is entitled to restrict access to the document only to the persons entitled to assist or represent the parties, and order that these persons cannot make any reproduction or copy without the authorization of the owner of the document. The judge can also order the disclosure of the full version of the document if it is necessary for the resolution of the dispute. However, the judge can still control access to it by limiting its communication only to certain individuals.