Publication Order rubs Salt in Prysmian’s wounds

United KingdomScotland

Orders for the dissemination of judgments in IP infringement claims are a well-known remedy and have been used in a number of prominent infringement cases in recent years. However, the use of such orders in trade secrets cases is less established.

This was set to change following the implementation of the Trade Secrets Directive in 2018. The relevant UK legislation now expressly grants the Court the power to order appropriate measures for the dissemination of a judgment where the unlawful use or disclosure of trade secrets has been found.

Now, in December 2021, the first such application has come before the High Court in Salt Ship Design AS v Prysmian Powerlink SRL [2021] EWHC 3583.

The case involves the unlawful disclosure by Prysmian Powerlink of confidential design documents relating to a new cable laying vessel designed by Salt Ship Design. Following a finding of liability, the claimant sought an order requiring the defendant to publish a notice and link to the judgment on its website.

In granting an order under Regulation 18 of the Trade Secrets (Enforcement etc) Regulations 2018, Mr Justice Jacobs has provided some useful guidance on the circumstances in which such orders may be made. In particular, it was held that the relevant test is whether such an order would be “proportionate”. Necessity, as argued by the defendant, does not form part of the relevant assessment.

The judge gave particular focus to the factors in paragraph 3 of Regulation 18 (e.g. the value of the trade secret, the infringer’s conduct and the impact of the unlawful use). Policy reasons, such as the fact that the publication would deter future infringers, were also highly relevant.

In contrast, the fact that the judgment regarding liability had already received some publicity in the relevant sector and the fact that it was open to the claimant itself to publicise the judgment were not sufficient to outweigh the factors in favour of granting such an order.

As a consequence, Prysmian Powerlink was ordered to publish a statement on its website for six months.

While orders for the dissemination of judgments are not new, it is reassuring for trade secret holders to see that the new legislative powers are being used, providing a further deterrent to any would-be infringer.

The full judgment can be found here.