LAWON PROTECTION OF TRADE SECRET("Off. Herald of RS", No. 53/2021) |
Article 1
This Law shall govern the legal protection of a trade secret against illegal acquisition, use and disclosure.
Article 2
Certain terms used in this Law shall have the following meaning:
1) Information meeting the following requirements shall be considered a trade secret:
(1) they represent a secret because they are not in whole or in terms of the structure and set of their components generally known or easily accessible to persons who in their activities usually come into contact with this type of information;
(2) they have commercial value because they represent a secret;
(3) a person legally controlling them has undertaken reasonable measures in order to preserve their confidentiality in given circumstances;
2) the holder of a trade secret is a natural person or legal entity under whose legal control is the trade secret;
3) a person who has violated a trade secret is a natural person or legal entity who has illegally acquired, used or disclosed a trade secret;
4) a person suspected of violating a trade secret is a natural person or legal entity suspected of having illegally acquired, used or disclosed a trade secret;
5) the infringing goods are goods whose design, characteristics, mode of functioning, manufacturing process or method of placing in circulation have been substantially achieved thanks to a trade secret that has been illegally acquired, used or disclosed.
The information referred to in paragraph 1, item 1) of this Article shall include, inter alia, knowledge and experience, business information and technological information.
Reasonable measures for maintaining the confidentiality of information referred to in paragraph 1, item 1) sub-item (3) of this Article shall be considered, inter alia, drafting an internal act on handling a trade secret and the circle of persons and their rights and obligations when handling a trade secret, measures of physical or electronic protection of access and handling of a trade secret, marking documents with a "trade secret" or similar mark, restricting access to premises and files containing information that is considered a trade secret or concluding confidentiality agreements, i.e. non-disclosure of confidential information with persons who could potentially come into possession of a trade secret, including employees, business partners, external associates and consultants, i.e. signing statements of confidentiality or non-disclosure of confidential information by the said persons.
II ACQUISITION, USE AND DISCLOSURE OF A TRADE SECRET
Legal Acquisition, Use and Disclosure of a Trade Secret
Article 3
Acquisition of a trade secret shall be considered legal if the trade secret has been acquired in one of the following ways:
1) by virtue of independent discovery or creation;
2) by virtue of observing, studying, disassembling or testing a product or item which has been made available to the public or which is legally in possession of information acquirer (reverse engineering) that is not bound by a legally valid obligation to restrict the acquisition of a trade secret or that is not bound by a legally valid obligation to prohibit the performance of reverse engineering;
3) by virtue of exercising the right of employees or employee representatives to information and consultation in accordance with special regulations;
4) by another action that is in the circumstances of a particular case in accordance with good business practice;
The acquisition, use or disclosure of a trade secret shall be considered legal to the extent required or permitted by special regulations.
Illegal Acquisition, Use and Disclosure of a Trade Secret
Article 4
Acquisition of a trade secret without the consent of the holder of a trade secret shall be considered illegal if it is done in the following manner:
1) by virtue of unauthorized access, appropriation or duplication of documents, items, materials, substances or electronic files that are under the legal control of the holder of a trade secret and contain a trade secret, or a trade secret may be derived therefrom, or
2) by virtue of other conduct that, in such circumstances, is considered to be contrary to good business practice.
The use or disclosure of a trade secret shall be considered illegal if it is performed without the consent of the holder of the trade secret by a person who is found to have:
1) acquired the trade secret illegally;
2) violated a confidentiality agreement or other obligation relating to the prohibition of disclosure of a trade secret;
3) violated a contractual or other obligation limiting use of a trade secret.
The acquisition, use or disclosure of a trade secret shall be considered illegal if the person at the time of acquisition, use or disclosure knew or had to know, in the given circumstances, that the trade secret was acquired directly or indirectly from another person who illegally used or disclosed the trade secret within the meaning of paragraph 2 of this Article.
Illegal use of a trade secret shall also considered to be manufacturing, offering or putting into circulation the goods whereby the infringement was made, i.e. import, export or storage of infringing goods for the purposes of manufacturing, offering or placing on the market of goods, if the person who performed the specified activities knew or, in the given circumstances, had to know that the trade secret was used illegally within the meaning of paragraph 2 of this Article.
Lawsuit for Violation of a Trade Secret
Article 5
In case of violation of a trade secret, the holder of a trade secret may file a lawsuit to request:
1) determination of violation;
2) cessation of violation, or depending on the case, prohibition of use or disclosure of a trade secret;
3) prohibition of manufacturing, offering, putting into circulation or using infringing goods, i.e. prohibition of import, export or storage of infringing goods for the purposes of manufacturing, offering, putting into circulation or using goods;
4) imposition of appropriate measures relating to the infringing goods, which include withdrawal of such goods from the market, removal from the goods of properties making it goods by virtue of which violation of a trade secret has been committed or destruction of infringing goods, i.e. if it is justified, its withdrawal from the market, provided that withdrawal of the goods does not jeopardize protection of a trade secret to which the lawsuit relates;
5) destruction in whole or in part of documents, items, materials, substances or electronic documents containing a trade secret or which themselves represent a trade secret or, if appropriate, submission of such documents, items, materials, substances or electronic documents in whole or in part to the plaintiff.
Against a person whose unauthorized undertaking of a certain action represents an immediate threat that such persons will illegally acquire, use or disclose a trade secret, the holder of a trade secret may file a lawsuit requesting cessation of such action and prohibition of illegal acquisition, use or disclosure of a trade secret.
The lawsuit claims referred to in paras. 1 and 2 of this Article may also be filed against an intermediary who provides services that a third party uses in actions by virtue of which such party illegally acquires, uses or discloses a trade secret, i.e. undertaking of which poses an immediate threat to the illegal acquisition, use or disclosure of a trade secret.
When the plaintiff requests withdrawal of the infringing goods from the market, he/she may request that the goods be handed over to the holder of the trade secret or to charitable organizations.
The measures referred to in paragraph 1 items 4) and 5) of this Article shall be performed at the expense of the person who has violated the trade secret, unless determined otherwise by the court.
In addition to the holder of a trade secret, the lawsuit referred to in paras. 1 and 2 of this Article may also be filed by a licensee, if authorized to do so under an agreement or law.
Time Limit for Filing a Lawsuit
Article 6
A lawsuit for violation of a trade secret may be filed within one year from the date when the plaintiff learned of the violation and the person suspected of violating the trade secret, and no later than five years from the date of the committed violation or from the date of the latest committed violation if a violation is made continuously.
The proceedings of the lawsuit referred to in paragraph 1 of this Article shall be urgent.
Article 7
When deciding on lawsuit claims referred to in Article 5 of this Law, the court shall take into account that the measures should be in proportion to the nature and intensity of the violation, whereby taking into account the special circumstances of the case, which may include:
1) value and other characteristic features of a trade secret;
2) measures undertaken in order to protect a trade secret;
3) conduct of a person who has violated a trade secret while acquiring, using or disclosing a trade secret;
4) consequences of illegal use or disclosure of a trade secret;
5) reasonable interests of the parties and consequences that the adoption or rejection of the lawsuit claim could have on them;
6) reasonable interests of third parties;
7) public interest;
8) protection of fundamental rights.
If the court limits the duration of measures imposed on the basis of the claims referred to in Article 5, paragraph 1, items 2) and 3) of this Law, such duration must be sufficient to eliminate any trade or economic benefit that a person who has violated a trade secret could accomplish by virtue of illegally acquiring, using or disclosing a trade secret.
Measures imposed on the basis of the claims referred to in Article 5, paragraph 1, items 2) and 3) of this Law shall be canceled, upon request of the person who violated the trade secret, if the information to which the claims relate no longer meet the requirements referred to in Article 2, paragraph 1, item 1) of this Law, for the reasons that the person who violated the trade secret is not directly or indirectly liable.
The court may, upon request of the person who violated the trade secret, taking into account the circumstances of the case, instead of measures imposed on the basis of the claims referred to in Article 5 of this Law, order payment of monetary compensation to the injured party, if the following conditions are met:
1) the person who violated the trade secret at the moment of using or disclosing the trade secret neither has known, nor in the given circumstances had to know that the trade secret was acquired from another person who illegally used or disclosed the trade secret;
2) execution of the measures referred to in Article 5 of this Law would cause disproportionate damage to the person who violated the trade secret.
If instead of measures imposed on the basis of the claims referred to in Article 5, paragraph 1, it. 2) and 3) of this Law, the court awards payment of monetary compensation, it must not exceed the amount of compensation that a person who violated a trade secret would have paid if he had legally used a trade secret for a period in which the use of a trade secret was not allowed.
Article 8
Against a person who violated a trade secret who knew or had to know that he/she participated in the illegal acquisition, use or disclosure of a trade secret, the holder of a trade secret, i.e. the licensee may by virtue of a lawsuit claim for damages according to the general rules on compensation of damages and in accordance with this Law.
When determining the amount of damages, the court shall take into account all the circumstances of the case, such as the negative economic consequences suffered by the holder of a trade secret, i.e. the licensee, which include ordinary damage, lost benefit and the benefit achieved by violation of a trade secret by the person who violated the trade secret.
The holder of a trade secret, i.e. the licensee, shall have the right to compensation of non-pecuniary damage caused by the illegal acquisition, use or disclosure of a trade secret.
If the court cannot determine the amount of damages in accordance with paras. 2 and 3 of this Article, it shall take into account the amount of compensation that the person who violated the trade secret would have paid for the legal use of the trade secret.
Article 9
The holder of a trade secret may, by virtue of a lawsuit, request for the final judgment by virtue of which the claims referred to in Art. 5 and 8 of this Law were in whole or partially adopted to be published in whole or in part in the media at the expense of the defendant.
If the court decides to publish only a part of the judgment, it shall impose, within the limits of the claim, publication of the ruling and the part of the judgment from which it is evident what violation was committed.
When deciding whether to impose the measure of publishing a judgment and assessing its proportion to the violation, the court shall take into account the value of the trade secret, conduct of the person who violated the trade secret when acquiring, using or disclosing the trade secret, consequences of illegal use or disclosure of the trade secret and the probability that the person who has violated the trade secret is to illegally use or disclose the trade secret again. The court shall also consider whether information on the person who has violated the trade secret contains personal data of a natural person and whether disclosure of such information would be justified, especially given the potential damage that publication could cause to the privacy and reputation of such a natural person.
Publication of a judgment in terms of this Article must be done in a way that preserves the confidentiality of a trade secret in accordance with Article 19 of this Law.
Article 10
Upon motion of the holder of the trade secret who makes it probable that the trade secret exists, that he/she is the holder of the trade secret and that the illegal acquisition, use or disclosure of the trade secret has occurred or is to occur, the court may impose the following interim measures:
1) termination or prohibition of the use or disclosure of a trade secret;
2) prohibition of manufacturing, offering, putting into circulation or use of infringing goods, i.e. prohibition of import, export or storage of infringing goods for the purposes of manufacturing, offering, putting into circulation or use of goods;
3) seizure of goods suspected of having made the infringement, including also imported goods, in order to prevent their putting into circulation and their circulation.
Instead of imposing the measures referred to in paragraph 1 of this Article, the court may allow a person suspected of violating a trade secret to continue to use the trade secret, provided that he/she lodges a guarantee in order to secure compensation of damages in favor of the holder of the trade secret. By virtue of lodging a guarantee, the right to disclosure of a trade secret shall not be gained.
When deciding on the motion for imposing an interim measure, the court shall also take into account the special circumstances of the case referred to in Article 7, paragraph 1 of this Law.
The court may also impose an interim measure of termination or prohibition of the use or disclosure of a trade secret against an intermediary whose services are used by third parties in order to illegally acquire, use or disclose a trade secret.
Upon motion of the holder of a trade secret who makes it probable that the trade secret was illegally acquired, used or disclosed when carrying out business, for the purpose of gaining trade or economic benefit, and that due to such violation he/she is might suffer irreparable damage, in addition to the interim measure referred to in paragraph 1 of this Article, the court may also impose:
1) seizure of movable and immovable property of the person against whom imposition of an interim measure is proposed;
2) prohibition of payment of funds from the account of a person against whom imposition of an interim measure is proposed.
For the purpose of imposing the interim measure referred to in paragraph 5 of this Article, the court may order submission of banking, financial, business or other documents and data or order enabling of access to such documents and data. The court shall ensure confidentiality of the said data.
A person against whom the interim measure was imposed regarding the prohibition referred to in paragraph 1, it. 1) and 2) and paragraph 5, item 2) of this Article, i.e. to whom has been given an order referred to in paragraph 6 of this Article, and who fails to comply with prohibition, i.e. order, shall be punished in accordance with the provisions of the law governing the procedure of enforcement and security interest.
The court may impose an interim measure immediately upon receipt of the motion for imposition of the interim measure and without prior statement of the opposing party, and especially if there is a danger that the petitioner is to suffer irreparable damage due to the delay.
The decision imposing the interim measure, in the case referred to in paragraph 8 of this Article, shall be delivered to the parties to the proceedings without delay, and after the implementation of the measure at the latest.
Canceling Interim Measure and Compensation of Damages
Article 11
If an interim measure was imposed before initiation of the lawsuit, the complaint regarding violation of the trade secret that initiates the lawsuit must be filed within 30 days from the date of delivery of the decision on imposing the interim measure.
If the complaint regarding violation of a trade secret is not filed within the time limit referred to in paragraph 1 of this Article, the court shall, upon the motion of the person against whom the interim measure was imposed, suspend the procedure and cancel the conducted actions.
If the interim measure is imposed without the statement of the opposing party in the case referred to in Article 10, paragraph 8 of this Law, the court shall allow the opposing party to make a statement regarding the interim measure within a reasonable time limit, after which it may suspend the procedure and cancel the conducted actions or amend the imposed measure.
Should the procedure be suspended and the conducted actions canceled in accordance with paras. 2 and 3 of this Article, or if the court should find that violation of the right has not been committed or that there has been no serious threat that the right is to be violated, the person against whom the interim measure has been imposed shall be entitled to compensation of damage caused by the interim measure.
The court may condition imposition of an interim measure by providing an appropriate guarantee as a means of security interest for the damage that could be inflicted on the person against whom the interim measure is proposed by virtue of imposing and implementing the interim measure.
Article 12
When a party in lawsuit refers to documents or other evidence that are specified or determinable and claims that they are in possession of the other party or a third party or are available to them, the court shall summon such persons to submit documents i.e. evidence within a specified time limit, provided that confidential information is to be protected.
In the motion for acquiring evidence, the party must make it probable that such evidence is in possession of the other party or a third party, i.e. is available to them.
Under the conditions referred to in paragraph 1 of this Article, in case that the right is violated in performance of economic activity, the court shall, upon motion of a party referring to evidence in possession of the other party or a third party, or is available to them, summon the other party or a third party to provide banking, financial and business documents in their possession or available to them, provided that confidential information is protected.
Article 13
Upon motion of the holder of a trade secret who makes it probable that the trade secret exists, that he/she is the holder of the trade secret and that illegal acquisition, use or disclosure of the trade secret has occurred or is to occur, the court may, during and as well before the start of a lawsuit, order the evidence to be secured, provided that confidential information is protected.
Securing evidence, in terms of paragraph 1 of this Article is considered to be:
1) taking a detailed description of items violating a trade secret, with or without taking samples of such items;
2) seizure of items or parts of items violating a trade secret, and if that is justifiable, and seizure of documents, materials and items (accessories, tools) mainly used in the creation or putting into circulation of items violating a trade secret;
3) inspection of premises, vehicles, books, documents and databases;
4) interviewing witnesses and expert witnesses.
When securing evidence is ordered before initiation of the lawsuit, the complaint regarding violation of a trade secret must be filed within 30 days from the date of delivery of the decision adopting the motion for securing evidence.
The court decision adopting the motion for securing evidence shall be delivered to the person from whom the evidence is collected at the moment of collecting evidence, and should the person be absent the rules from Article 16 of this Law shall apply to delivery.
Procedure of Securing Evidence
Article 14
The court may order the securing of evidence immediately upon receipt of the motion to secure evidence and without a statement from the opposing party, especially if there is a danger that the petitioner is to suffer irreparable damage due to delay, or that some evidence shall not be presentable or that its later presentation shall be difficult.
The decision adopting the motion for securing evidence, in the case referred to in paragraph 1 of this Article, shall be delivered to the parties in the procedure without delay.
Should the complaint regarding violation of a trade secret not be filed within 30 days from the date of delivery of the decision adopting the motion for securing evidence, the court shall suspend the procedure and cancel the conducted actions upon motion of the person from whom the evidence is acquired.
If securing evidence is imposed without the statement of the opposing party, the court shall, within a reasonable time limit, enable such party to make a statement on the decision adopting the motion for securing evidence, and thereafter it can suspend the procedure and cancel the conducted actions or amend the ordered securing of evidence.
If the procedure is suspended and the conducted actions are canceled, or if the court finds that violation of rights has not been committed, or that there has been no serious threat that the right is to be violated, the party against whom securing evidence has been ordered shall be entitled to compensation of damage caused by securing evidence.
The court may condition adoption of the motion to secure evidence by provision of an appropriate guarantee as security interest for damage that may be caused to the opposing party by virtue of securing evidence.
Obligation to Provide Information
Article 15
The court may, upon justified and proportionate request of the person whose right has been violated, order the person who violated the trade secret to provide information on third parties who participated in violation of the trade secret and their distribution channels, or to hand over documents related to violation of the trade secret.
In addition to the person who violated a trade secret, the court may also order the following person to provide information and hand over the documents referred to in paragraph 1 of this Article:
1) with whom goods have been found by virtue of which in performance of economic activity a trade secret is violated;
2) who in performance of economic activity uses services that violate a trade secret;
3) who in performance of economic activity provides services that are used in activities that violate a trade secret;
4) who is by the person referred to in it. 1), 2) or 3) of this paragraph listed as a person involved in manufacturing or distribution of goods or provision of services violating a trade secret.
The information referred to in paragraph 1 of this Article shall include in particular:
1) information on manufacturers, distributors, suppliers and other persons who were involved in manufacturing or distribution of goods or provision of services, as well as on sellers for whom the goods are intended;
2) information on quantities of services or goods, manufactured, delivered or ordered, as well as on prices charged for such goods or services.
If the persons from paras. 1 and 2 of this Article, for justified reasons, do not act on the order of the court and do not provide the requested information or do not hand over documents, they shall not be liable for damage resulting therefrom.
Regulations governing the manner of use of confidential information in civil and criminal procedures, regulations governing liability for abuse of the right to acquire information, as well as regulations governing personal data protection, shall apply to the obligation to provide information in accordance with the provisions of this Article.
Article 16
Submissions and decisions in court proceedings relating to illegal acquisition, use or disclosure of a trade secret shall not be delivered through a bulletin board.
In case of unsuccessful delivery, the court shall summon the party via the bulletin board to take over the submission or decision directly in the court within eight days from the date of publishing the summons.
If the party does not take over the submission or decision within the time limit referred to in paragraph 2 of this Article, the delivery shall be deemed to have been effected on expiration of the eighth day from the date of publishing the summons to take over the submission or decision on the court's bulletin board.
Article 17
The provisions of this Law on measures, legal remedies and procedures shall not apply in the following cases:
1) for the purpose of exercising the right to freedom of expression and information, in accordance with the Constitution of the Republic of Serbia, the European Convention for the Protection of Human Rights and Fundamental Freedoms and the judgments of the European Court of Human Rights, the European Union Charter of Fundamental Rights, law governing the right of access to information of public importance, as well as the law governing public information and media, and in accordance with freedom and diversity of media;
2) for the purpose of detecting criminal acts and other illegal activities, provided that the person who acquired, used or disclosed a trade secret acted for the purpose of protecting the public interest;
3) for the purpose of disclosing a trade secret by employees to their representatives within the legal performance of the function of a representative, in accordance with special regulations, provided that disclosure of a trade secret has been necessary for the legal performance of the function of a representative;
4) with a view to protecting the rights recognized by a special law, or
5) in connection with provision of legal assistance by attorneys in accordance with the regulations governing the status of lawyers’ profession.
Mutatis Mutandis Application of Other Laws
Article 18
The provisions of the law governing civil procedure and the law governing procedure of enforcement and security interest shall apply mutatis mutandis to issues not specifically regulated by this Law and related to the procedure under a complaint for violation of a trade secret, the motion for imposing an interim measure and the motion for securing evidence.
The provisions of the law governing contracts and torts shall apply mutatis mutandis to issues not specifically regulated by this Law and related to damages.
Preservation of Confidentiality in relation to Court Proceedings
Article 19
Parties, their lawyers or other representatives, court clerks, witnesses, expert witnesses and other persons participating in court proceedings for illegal acquisition, use or disclosure of a trade secret or who have access to documents that are an integral part of the court proceedings may not use or disclose a trade secret or information that may represent a trade secret that the court, upon reasoned request of the interested party, has established as confidential and that such persons have learned about it due to their participation in the court proceedings.
The persons referred to in paragraph 1 of this Article shall keep a trade secret even after completion of court proceedings.
The obligation referred to in paragraph 2 of this Article shall cease:
1) if it is determined by virtue of a final court decision that the information that may represent a trade secret does not fulfill the requirements set out in Article 2, paragraph 1, item 1) of this Law, or
2) if the information constituting a trade secret over time becomes generally known or easily accessible to the persons normally dealing with such type of information.
The court may, upon reasoned request of a party, impose special measures to preserve secrecy of a trade secret or information that may represent a trade secret that is used in or referred to during court proceedings related to illegal acquisition, use or disclosure of a trade secret.
The measures referred to in paragraph 4 of this Article shall be:
1) exclusion of the public from all or part of the court proceedings;
2) limiting the number of persons who have, in whole or in part, access to documents filed by the parties to the proceedings or third parties, and which contain a trade secret or information that may represent a trade secret. The court shall warn the persons to whom it has granted access to the documents of the obligation to maintain secrecy of the data referred to in paragraph 1 of this Article;
3) limiting number of persons attending hearings at which a trade secret or information that may represent a trade secret could be disclosed, as well as limiting access to the minutes from such hearings;
4) prohibition to make a court decision, wherein passages containing a trade secret have not been removed or made illegible, available to persons who are not persons referred to in it. 2) and 3) of this paragraph.
The number of persons referred to in paragraph 5, it. 2) and 3) of this Article may not exceed the number needed to ensure the party's right to professional assistance and to a fair trial.
When deciding on the measures referred to in paragraph 5 of this Article and assessing their justifiability, the court shall take into account the need to ensure the right of the parties to professional assistance and to a fair trial, reasonable interests of the parties and third parties, considering the circumstances of the case, as well as probability of occurrence of damage to one of the parties or to third parties, which could occur due to imposition or non-imposition of such measures.
Personal data processing on the basis of the measures for maintaining secrecy referred to in this Article shall be carried out in accordance with the regulations governing personal data protection.
The Rights of Foreign Persons to the Protection of a Trade Secret
Article 20
A foreign natural person and legal entity shall enjoy the same rights as a domestic natural person and legal entity with regard to protection of a trade secret, if this arises from international agreements applicable in the Republic of Serbia, or from the principle of reciprocity.
The existence of reciprocity is to be proved by the person referring to reciprocity.
Article 21
A legal entity illegally acquiring, using or disclosing a trade secret in accordance with Article 4 of this Law shall be fined for a corporate offense in the amount of 100,000 to 3,000,000 dinars.
For the actions referred to in paragraph 1 of this Article, the responsible person in the legal entity shall be fined for a corporate offense in the amount of 50,000 to 200,000 dinars.
For the actions referred to in paragraph 1 of this Article, a sole trader shall be fined for a misdemeanor in the amount of 50,000 to 500,000 dinars.
For the actions referred to in paragraph 1 of this Article, a natural person shall be fined for a misdemeanor in the amount of 20,000 to 150,000 dinars.
The items of committing a corporate offense or misdemeanor referred to in paras. 1-4 of this Article shall be seized and destroyed, and the items that have been used to commit a corporate offense or misdemeanor referred to in paras. 1-4 of this Article shall be seized.
Article 22
On the date of entry into force of this Law, the Law on Protection of Trade Secret ("Official Herald of RS", No. 72/11) shall be repealed.
Article 23
This Law shall enter into force on the eighth day from the date of its publication in the "Official Herald of the Republic of Serbia", except for the provision of Article 17 item 1), in the part relating to application of the regulations of the European Union, which shall apply as of the date of accession of the Republic of Serbia to the European Union.