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Portugal

Case law on Trade Secrets in Portugal

Relevant topics related to the 2016 Trade Secret Directive (EU 2016/943)

Table of contents
  1. 1. Requirement to undertake reasonable steps to keep the information secret - art. 2(1)(c)
  2. 2. Reverse Engineering - e.g. art. 3(1)(b)
  3. 3. Infringing products - e.g. art. 2(4) and 4(5)
  4. 4. The (IP-like) catalogue of remedies - e.g. art. 10 and 12
  5. 5. Exceptions / allowed uses (and their relationship to contractual secrecy provisions) - art. 1 and 5
  6. 6. Secrecy in court proceedings (“confidentiality club”) - art. 9
Portugal
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1. Requirement to undertake reasonable steps to keep the information secret - art. 2(1)(c)

Non-existent.

2. Reverse Engineering - e.g. art. 3(1)(b)

Non-existent.

3. Infringing products - e.g. art. 2(4) and 4(5)

Non-existent.

4. The (IP-like) catalogue of remedies - e.g. art. 10 and 12

Process no. 779/19.6YRLSB.L1-7 (Lisbon Court of Appeal) 02.07.2019

A biopharmaceutical research company brought proceedings against a distribution company providing medicines covered by the former’s patents. The claimant requested that the following precautionary measures be applied to the plaintiff to stop the commercialisation of in the Portuguese territory of its products:(i) the plaintiff should stop commercialising the said products; (ii) that the plaintiff removed the products from the market within the Portuguese territory; (iii) that the plaintiff notifies all the parties to which it has distributed the products that the distribution was illicit; (iv) the plaintiff to shall not use the same active substances of the said products to commercialise others with similar composition.

The appeal was declared to be unfounded by the court, given that the complementary protection certificate (CCP), an IP right that grants protection offered by a patent for a given medicine, would grant the claimant a legal ground on which to request precautionary measures, was declared invalid. Nevertheless, this case is important as it demonstrates the requirements for these measures to be applied by courts in the case of the protection of registered brands, patents or trade secrets.

Following the rules established in the Portuguese Code on Industrial Property, the court found that whenever there is a violation causing damage or found risk that severe and difficult-to-repair damage is likely to occur with regard to industrial rights, a claim can be brought before the court to apply provisional and precautionary measures. These measures should be adequate to (i) prevent any imminent violation or (ii) unable the progression of the violation. Additionally, only the subject of this trade secret right (or its legal representative) can request the application of these measures.

Aside from provisional and precautionary measures, the Portuguese courts may also order other measures where a judicial decision on the case's merits finds that there has been usage or disclosure of a trade secret, such as (i) temporary interdiction of conducting certain professional activities; (ii) the infringer may not be able to participate in fairs and markets; (iii) temporary or definite closure of the establishment.

5. Exceptions / allowed uses (and their relationship to contractual secrecy provisions) - art. 1 and 5

Non-existent.

6. Secrecy in court proceedings (“confidentiality club”) - art. 9

Process no. 99/21.6YHLSB-A.L1-PICRS (Lisbon Court of Appeal) 10.03.2022

In this case, the claimant brought proceedings to the first instance court due to its company’s trade secrets being breached by the plaintiff, with whom the former had entered into a confidentiality agreement. The plaintiff had allegedly commercialised similar products at lower rates, following the claimant’s know-how. Therefore, the claimant requested that the plaintiff present the technological means to produce the said product, which the court denied. Consequently, the claimant appealed so that the evidence containing the plaintiff’s know-how was disclosed in that proceeding."

The Lisbon Court of Appeal requested that the trade secret of the plaintiff be disclosed in the said proceeding, contradicting the decision of the preceding court. The Court deemed it necessary to disclose such obligation in order to determine whether the claimant was right in asserting that there had been an infringement of its trade secret. To do so, the court considered the right of the claimant to request the presentation of that evidence on the one hand and the right of the other party to maintain that information confidential on the other.

Nevertheless, the court still pointed out that specific and proportional measures to ensure the preservation of trade secrets would be adopted:(i) This rule applies not only to the parties directly involved in the dispute but also to third parties that may have access to the proceeding. Under the rule of secrecy in court proceedings, everyone who has access to this information must respect its confidentiality, (ii) Portuguese courts also limit the number of people accessing the trial hearing and the transcriptions to ensure confidentiality is not breached, (iii)the secrecy of this information remains after the final ruling, except if (a) the previously confidential information has fallen under the public domain and (b) if the court has ruled that that information does not qualify as a trade secret.