Case law on Trade Secrets in Spain

Decision 474/2017 of the Supreme Court, on July 20, 2017:

The Court rules that, when the patent is complemented with know-how that is not included in the patent’s scope of protection, the invention does not absorbe said know-how. Therefore, the patent right does not prevent the existence of a trade secret regarding the know-how that has not been disclosed during the patent registration.

Decision 853/2022 of the Court of Appeal of Barcelona, on May 20, 2022:

The Court considers, in light of the particular circumtances of the case, that the signature of a non-disclosure agreement (NDA) is sufficient to comply with the requirement of undertaking reasonable steps to keep the information secret. This decision is relevant since it does not follow the general criteria of the Spanish Courts, that usually do not accept a NDA on its own as a sufficient measure to protect information as a trade secret.

Decision 1671/2021 of the Court of Appeal of Barcelona, on July 30, 2021:

The following protection measures as a whole are to be considered as reasonable steps to keep the information secret: (i) guideline for the use of corporate ICT resources (e.g. approval by the employee understanding the confidentiality of the information as a requirement to access the computer); (ii) segmentation system of access permissions to the company’s information, even if the system might fail to prevent access to some employees under some circumstances; and (iii) confidentiality measures in compliance with the labour regulation, that would not be sufficient by themselves to protect the information as a trade secret but contribute with the previous measures to keep the information confidential.

Thus, the Court states that the information is protected as a trade secret since it is not easily accessible, not even by the employees, considering the protection measures implemented and even the enormous volume of the information.

Decision 2355/2019 of the Court of Appeal of Barcelona, on December 17, 2019:

The Court rules that the applicant has not undertaken reasonable steps to keep the information secret, given that the IT protection measures implemented by the company (e.g. passwords and access segmentation) were too ordinary and general to be considered as reasonable steps to keep the information secret.

Decision 226/2013 of the Court of Appeal of Barcelona, on June 25, 2013:

The Court rules that, even if the protection measures have been proven not effective under some circumstances to protect certain information as a trade secret, said measures can be considered reasonable steps to keep the information secret in some cases. 

Decision 212/2019 of the Court of Appeal of Barcelona, on December 17, 2019:

The Court finds suitable the expert report used by the defendant to argue that it was not possible to obtain the information of the manufacturing process of the machinery protected as a trade secret through a reverse engineering process considering (i) the high complexity of the manufacturing process; and (ii) that the machinery is located in private facilities difficult to access, since it is submerged under water.

Decision of the Court of Barcelona, on March 14, 2018:

The defendant developed a machinery prototype when working for a company. Said company claimed a trade secret infringement since the employee, after terminating his contract, offered the technical solution subject to be considered a trade secret to a competitor. The Court decides that the defendant has exploited the trade secret to collaborate with the competitor, which constitutes a trade secret infringement. Since the infringing products -based on the prototype protected as a trade secret- had been built and comercialized by the competitor in the past  and were not currently in production, the Court states as a remedy the publication of the decision.

Decision 853/2022 of the Court of Appeal of Barcelona, on May 20, 2022:

Considering the Court that the disclosure of the confidential information protected by a NDA is an infringement of a trade secret, the defendant must pay a EUR 4,2M compensation due to the damages and income loss caused to the claimant regarding the frustation of the intended transaction. The decision is relevant since the compensation imposed by the Court is considerably higher than in other cases.

Decision 317/2022 of the Court of Appeal of Barcelona, on February 21, 2019:

The Court rules that the defendant used a list of clients that can be considered as trade secret for activities that were not authorised under the agreement entered into between the parties. The Court imposes a compensation of EUR 15K to the defendant, rejecting the claimant’s request of a compensation up to EUR 450K based on the company’s sales decrease during the last 5 years, and calculating said compensation according to the value of the clients involved in the infringement, which would be the result of the average of the profit margin obtained from said clients during the last 5 years.

Decision of the Court of Barcelona, on March 14, 2018:

The defendant was asked to publish in an specialized magazine of the sector the Court’s decision regarding the unauthorised exploitation of a trade secret.

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