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Publicity order granted in first reported case under the Trade Secrets (Enforcement, etc.) Regulations 2018

Insights / / London

Salt Ship Design AS v. Prysmian Powerlink SRL [2021] EWHC 3583 (Comm)

In September 2021, the Court found Prysmian Powerlink SRL (Prysmian) liable for breach of confidence and unlawful conspiracy for misusing Salt Ship Design AS’s (Salt) confidential documents and making them available to its own designer. It also indicated that exemplary damages might be available as a remedy. We previously reported on the Court’s liability judgment (see article here).

Subsequently, Salt made an application for a publicity order under the Trade Secrets (Enforcement, etc.) Regulations 2018. In December 2021, the Court approved Salt’s application for publicity of a notice to be displayed on the Leonardo da Vinci Cable Laying Vessel (“Vessel”) page on Prysmian’s parent company website, stating that the Court had ruled that Prysmian had misused Salt's confidential information in relation to the design of the Vessel and linking to the two judgments.   

There were no reported cases of publicity orders made under the 2018 Regulations, so the Court analysed similar orders granted under equivalent provisions, such as the IP Enforcement Directive (2004/48/EC). In making the order, the Court took into account the three factors Salt relied upon in its application, set out in the Trade Secrets (Enforcement, etc.) Regulations 2018, namely:

  1. The value of the trade secrets. Salt’s trade secrets were previously found to be valuable.

  2. The conduct of the infringer. The Court had previously found that Prysmian’s conduct was a “blatant” misuse of Salt’s confidential information in breach of both contract and equity.

  3. The impact of disclosure. The disclosure by Prysmian of critical design documents prepared by Salt to a rival designer deprived Salt of being associated with an award-winning project.

For policy reasons, the Court found that publicity of the statement on the relevant Vessel website page, rather than the parent company home page, “will act as a deterrent for the misuse of confidential information by Prysmian generally in its business dealings, as well as acting as a deterrent for third parties, whether designers or shipbuilders or others”.

The Court emphasised that a publicity order should not be punitive, and the possibility of misconceiving information about Prysmian was to be avoided. Therefore, the publicity order had to clarify that Prysmian was not prevented from trading the Vessel.

Comment

The Court’s order is the first reported publicity order granted under the provisions of the Trade Secrets (Enforcement, etc) Regulations 2018. It highlights that an infringement of intellectual property rights concerning design might, in addition to monetary compensation, lead to serious reputational damages for those infringing such rights, if a publicity order is made.

The Court’s conclusion was reached with reliance on aspects of the liability judgment that were not subject to further appeal/determination. The entitlement to exemplary damages is still pending. We are closely monitoring and will report on developments as they arise.

If you have any questions about the content in this article or would like to discuss further, please do not hesitate to reach out.

Chris Kidd

Chris Kidd Head of Shipbuilding and Offshore Construction, Joint Head of Energy & Infrastructure, Partner

Tarek Taha

Tarek Taha Associate

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