New law shall regulate the protection of the trade secret

A submission in the National Assembly of the Republic of Bulgaria of an entirely new Trade Secret Protection Act prepared by the Council of Ministers lies ahead. The draft of the legislative act, which has already passed the phase of public discussions, aims at transposing in the Bulgarian legislation Directive (EU) 2016/943 of the European Parliament and the Council from June 8^th 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

Yet upon initial review of the draft law it could be of interest the envisaged broad definition of the concept of trade secret. This shall be information which simultaneously fulfills the criteria laid down in the act, namely: it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; it has commercial value because it is secret; it has been subject to measures undertaken by the person in control of the information in order to keep it secret.

A focus of the legislative act is the introduction of a special procedure for protection against infringements of trade secret. The new regulation aims at guaranteeing the protection of the persons affected by such infringements, as well as at ensuring their effective compensation for potential damages incurred as a result of unlawful acquisition, use or disclosure of a trade secret. Measures for confidentiality in the judicial procedures initiated for seeking protection under the conditions of the new act are envisaged, which measures shall allow restriction of the access to certain information upon fulfilment of the requirements laid down in the draft act.

A possibility for imposition of temporary (securitization) measures for protection of a trade secret is laid down, before filing a claim under the conditions of the new law, for instance, suspension or prohibition as a temporary measure of the use or disclosure of the trade secret; prohibition of the production, offering, placing on the market, etc. of goods subject to infringement, etc.

The liability for adjudication by the court of compensation for damages shall be objective. It is set out that the infringer shall be obliged to indemnify the trade secret owner for all damages and loss of revenues which are direct consequence from the unlawful acquisition, use or disclosure of a trade secret, in cases where the infringer has known or ought to have known upon existence of the respective conditions that he/she was engaged in unlawful acquisition, use or disclosure of a trade secret.

Of course, it is yet to be seen what would be the final text of the law, as well as the direction in which the court practice shall develop under cases initiated under the conditions of the new legislative act. It could be of interest also the matter whether the law shall create an applicable regulation which to actually provide a way for protection of the business upon infringement of one of its main ‘assets’ – the trade secret.

Amendments in the Civil Proceedings Code

On 22.05.2018, the National Assembly adopted an Act amending the Civil Proceedings Code (CPC). The need for amendments is related to the regime of the enforcement proceedings, in particular to the European small claims procedure and the exequatur under the Hague Convention from 2007. However, the legislator used the occasion to introduce substantial changes related to the partial claim, by amending, apart from the CPC, also the basic civil act, the Act on Obligations and Contracts.

The partial claim is subject of a case for interpretation of the law brought before the Supreme Court of Cassation (SCC) in 2016 because of issues controversially resolved by the courts. However, the new legislative amendments to a great extent give an explicit answer to some of the interpretative issues.

One of these issues, which is explicitly regulated by the present amendments, is the question for the statute of limitation when a partial claim is filed, and the legislator expressly stipulates in the civil law that the statute of limitations is suspended or interrupted only for the claimed part, as is the view of most of the case law on the repealed CPC. Also, as regards filing a claim, among the grounds for termination of a case, the legislator expressly provides that when there are two cases pending between the same parties, on the same grounds and for the same claim, the case is not terminated if it is for the part of the claim which has not been raised initially which the initial claim is still pending. It is to be assumed that the judgment in the earlier case is conditional on the subsequent proceedings and is a ground for the suspension of the second case.

As a result of the changes thus adopted, some of the questions posed in the case before the SCC, related to the termination of a later filed claim and the limitation period, find their answer in the legislation. However, the SCC has to take a position on whether the decision on a partial action is a matter of res judicata concerning the facts of the disputed right in an action for the remaining part of the partial claim in another case.

(Source: State Gazette)

First officially confirmed by CPDP new regulations in Bulgaria in relation to GDPR

(Amendments in Ordinance No. 1 regarding the technical and organizational measures for personal data protection)

At the height of the most significant and major personal data protection reform, the core of which is the General Data Protection Regulation (GDPR), the local authority - Commission for personal data protection (CPDP) has announced on its web-portal that from 25 May 2018 on, in Bulgaria would enter into force a Methodical guide, which shall regulate the measures regarding the personal data protection, and replace the current regulation, as to this moment all the measures are amongst the provisions of the Ordinance No. 1 of 30^th January 2013 on the minimum level of technical and organizational measures and the admissible type of personal data protection.

Part of the intense preparation for the full implementation in Bulgaria of the requirements of Regulation (EU) 679/2016 (GDPR) are the undertaken legislation changes in the Bulgarian Personal data protection Act, which would be supplemented and amended. The long-awaited draft of the new Act is not still published for public consultations, according to the recent data provided by CPDP, the Act is sent for coordination to the Ministry of internal affairs.

INTELLECTUAL PROPERTY RIGHTS IN THE EU BEFORE AND AFTER BREXIT

The forthcoming withdrawal of the UK from the European Union (EU), the process of which was launched earlier this year, poses important questions related to the effect of the so-called EU intellectual property rights with unitary effect. These are, for example, the EU mark, the EU design, the EU protected geographical indications, SPCs and others. The main issue raised in relation to BREXIT is whether the acquired unitary rights will be exercised on the territory of the UK after its withdrawal from the EU and, if so, under what conditions. For instance, how and on what legal basis the rights acquired under EU law will be enforced and protected in the UK, how will the renewal of their protection (e.g. on every 10 years for trademarks) be regulated, the related payment of renewal fees and other specific questions.

In September 2017, the European Commission (EC) published on its official website (https://ec.europa.eu) its position paper and outlined the basic principles on the impact of BREXIT on intellectual property rights with unitary effect which will be proposed to UK in the framework of negotiation of the terms of its withdrawal from the Union. The UKIPO also published on its official website (https://www.gov.uk) the UK government's position on the subject.

After carefully analyzing the UKIPO's position, the lawyers from Penkov, Markov and Partners are on the opinion that it has some differences with the position of the EC, although in their entirety both are setting the common goal of finding the best possible solution in securing the rights and interests of the right-holders. ‘Penkov, Markov and Partners’ have in common with the EC’s opinion by considering that the Commission's proposals protect the interests of the holders of IP rights with unitary effect in the EU to a greater extent.

It is of utmost importance to provide legal means by which the unitary rights already acquired within the EU will continue to have effect for the UK territory after BREXIT. Otherwise, the interests of the owners of EU trademarks, EU designs, UK SPCs and other intellectual property rights would be seriously harmed, assuming that unitary IP rights would simply cease to exist after BREXIT for the territory of UK. This would result in a situation where other entities, most often competitors of the right-holders, or just traders acting in bad-faith, and by doing so often infringing IP rights, would benefit from the created legal uncertainty. In such a scenario the right-holders will have to apply anew on a general basis for IP registrations in the UK, which, in some hypotheses such in the case of the registered design, would be even procedurally impossible due to the applicability of international agreements (Paris Convention, etc.).

The EC therefore proposes not to undermine the protection already provided with registered EU trademarks, EU designs, or for any other exclusive unitary right granted before BREXIT. Therefore, their holders to be able to enforce them in the UK after BREXIT as well, i.e. to continue to rely on those IP rights and to seek judicial and administrative protection equivalent to the rights already provided under the EU law. The EC suggests that the UK should undertake to adopt specific national legislation for this purpose, in particular, the automatic recognition in the United Kingdom of the existing (on the BREXIT date) intellectual property rights having unitary character within the EU. EC suggests that the automatic recognition should not be associated with additional costs to the holders of unitary rights, acquired before BREXIT, and that any administrative formalities associated with this should be kept to a strict minimum.

With regard to the pending applications and procedures on the BREXIT date, the EC recommends that applicants should have the right to claim priority from EU applications for intellectual property objects having unitary character in order to obtain equivalent national intellectual property rights in the UK.

Especially for the SPCs the EC suggests granting of legal protection for the territory of the UK equivalent to that provided under EU law for each UK certificate issued within the Union before BREXIT. When a SPC application has been filed with the relevant UK national authority before BREXIT in accordance with EU law and the procedure is not yet completed the applicant should be entitled to receive a SPC with effect in the UK.

Regarding the protection of databases (with copyright and rights related to copyright), the EC proposal is that once the databases have already been protected before BREXIT their producers and right holders, within the meaning of Directive 96/9, should continue to benefit from the same protection in the remaining 27 member states and in the UK after the withdrawal. In this respect the EC put arguments that the restriction provided in Art. 11, Para. 1 and Para. (2) of Directive 96/9, according to which only EU persons/ entities enjoy protection under the sui generis right should be waived in respect of natural and legal persons from the UK. Accordingly, the expectation is that the UK also shall not exclude rights of protection for databases of EU natural and legal persons on the basis of nationality or place of establishment.

On the other hand the position of the UKIPO is that while the UK is a member of the EU the EU registered trademarks and designs will continue to have effect on its territory. When the UK leaves the EU, the unitary IP rights will continue to be valid in the remaining EU member states. After BREXIT businesses in the UK will be able to acquire EU trademark or EU design rights for the 27 member states on a general basis, and for UK territory through national applications for marks or designs submitted to the UKIPO, or using the Madrid International Trademark System. As regards the international design registration system, the UK government declares its readiness to accede to the Hague Agreement in the future. Currently, the protection for registered design in the UK cannot yet be obtained under the international system.

The conclusion is that the final decision on the legal effect of BREXIT on the scope of EU intellectual property rights with unitary character will be political one and will be included in the withdrawal agreement signed between the Union and the UK.

In view of the ambiguity of future UK regulation by the time the withdrawal agreement enters into force it would be advisable for the business to utilize the Madrid International Trademark System in order to ensure timely the provision of legal protection of their trademarks in the UK in addition to the EU trademark system, if interested in doing so.