When the GeschGehG was enacted, the legislature did not provide for the collection of additional information in cases where the use of trade secrets was suspected. Nevertheless, the inspection procedure is still possible.
Unlike intellectual property law provisions, the GeschGehG does not provide for a right to production and inspection where there is a reasonable likelihood of an infringement. Such rights were, however, incorporated into Section 140c (1) of the Patent Act (PatG) and, with identical wording, into the other intellectual property laws (see Section 101a of the Copyright Act (UrhG), Section 19a of the Trademark Act (MarkenG)) during the transposition of the Enforcement Directive 2004/48/EC. However, when transposing the Know-How Directive 2016/943, the legislature, as far as can be seen, did not even consider including a corresponding provision. In practice, however, the courts nevertheless grant this right.
Claim based on Section 140c of the German Patent Act (PatG) by analogy
A basis for the claim could be an analogous application of Section 140c PatG. It should be noted that, according to Recitals 2, 4, and 10, Directive 2016/943 was expressly intended to improve the protection of trade secrets in the EU. If a right of inspection were now denied, this would clearly not be in line with the intent of the Directive. Since the Directive also states that the protection of trade secrets is of equal importance to companies as the protection of intellectual property rights (recital 1), there is strong evidence of an unintended regulatory gap in cases involving comparable interests.
Claim under Section 809 BGB
If one does not wish to follow this line of reasoning, a right of inspection arises directly from Section 809 BGB. The Higher Regional Court of Frankfurt already recognized such a claim without hesitation in 2010 (Judgment of June 10, 2010 – 15 U 192/09). The Higher Regional Court of Hamm has also presumed the existence of such a claim (judgment of March 31, 2013, Case No. 4 U 200/12).
The GeschGehG has not altered this assessment. Section 809 BGB governs the right to inspect an item for the purpose of enforcing a “primary right” and is directed against the (potential) infringer of that primary right. In this context, Section 809, second variant, BGB grants the right to inspection not only when such a primary claim exists, but also when it is merely presumed. The Federal Court of Justice (BGH) had – long before the introduction of Section 140c of the Patent Act (PatG) and the corresponding provisions in other laws – ruled in the famous “Faxkarte” decision (BGH GRUR 2002, 1046 or here). According to that decision, the right to inspect is granted to the author who wishes to ascertain whether a specific item was produced in violation of the protected work (in that case, source code). At any rate, with regard to trade secrets, the BGH’s reasoning from this decision continues to apply in full.
TRIPS
The application of Section 809 BGB to the preservation of evidence regarding trade secrets is already required under the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As early as the “Faxkarte” case, the BGH had clarified that compliance with the TRIPS Agreement mandatorily requires the granting of a procedural measure for the preservation of evidence (Art. 43 TRIPS). Since the German legislature assumed, upon ratification of the TRIPS Agreement, that the creation of new legal institutions was not necessary, Section 809 BGB must be interpreted in a manner that satisfies the TRIPS Agreement. The key point is that the TRIPS Agreement does not cover only intellectual property rights in the strict sense, but also expressly addresses the protection of trade secrets (“undisclosed information,” “undisclosed information”) in Article 39 of the TRIPS Agreement. Compliance with the TRIPS Agreement therefore prohibits distinguishing between intellectual property rights and trade secrets in German law for the purposes of evidence preservation.
Conclusion
Even without an explicit provision in the GeschGehG, it is possible to obtain information as part of evidence preservation proceedings where there is suspicion of acts of exploitation. The legal basis for this is Section 140c PatG or Section 809 BGB.