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Breach of the new Trade Secret law strengthens a claim to the application of the Rome II Convention
In his latest judgement in Fetch.ai v Persons Unknown & Others  EWHC 2254 (Comm) His Honour Judge Pelling QC makes clear that not all claims in equity under Breach of Confidence will fall within the scope of the Rome II Convention, “[S]ome will where they involve unfair competition and acts restricting free competition, but many others will not.”[para.12]
The case relates to confidential information in the form of an access key code, allowing an operator to trade in assets nominally credited to a cryptocurrencies Exchange Account. This confidential information had been acquired by persons unknown and used to perpetrate alleged fraud against the account holder, generating losses in excess of $2.6m.
It was contended that the decision of the Court of Appeal in Shenzhen Senior Technology Material Company Limited v Celgard, LLC  EWCA (Civ) 1293;  FSR 1 would lead one to the conclusion that all breach of confidence actions come within the scope of Rome II, Chapter II, Article 4.1., because the principles in Article 6 apply. Judge Pelling noted, however, what Article 6 is concerned with is anti-competitive practices and anti-competitive conduct, “Celgard had sought to restrain the defendant from placing its rival lithium-ion battery separators on the market in the UK or importing them into the UK on the basis that the defendant had obtained access to the claimant’s intellectual property in relation to its product; and, thus, what the defendant in that case was seeking to do was not merely a breach of confidence in equity, but was also contrary to reg.3.1 of The Trade Secrets (Enforcement, etc) Regulations 2018.” [para.11]
Applying the Rome II Convention in this instance allowed Judge Pelling to provide injunctive relief and various orders for disclosure in favour of the account holder.
Previously our Acting Head of College Andrew joined us in 2004 as the Director of IP Wales®, our £4m award winning business support initiative.
Originally the Head of Swansea Law School (University of Wales Trinity Saint David) Andrew became the Director of the Swansea Intellectual Property Rights Initiative in 1999. In recognition of its support for Small & Medium Enterprise (SME) use of the IP system the Swansea IPR Initiative became the Winner of the Wales one-2-one Best 4 Business Award in 2000. Andrew was responsible for designing and launching IP Wales® in 2002. IP Wales® was the recipient of the Judges Special Prize at the WORLDLeaders European Awards in 2004. Under Andrew’s leadership over 800 businesses have been assisted to make informed commercial choices about their IP assets helping them to capture and protect over 220 patents, 70 trade marks and 10 design registrations around the World. Support was furnished to over 25 licensing deals (licensing-in & licensing-out) facilitating the commercial use of intangible assets by integrating an intellectual assets (IAs) strategy within the overall business plan.
In recognition of his success in raising levels of awareness and understanding of IP amongst the SME community in Wales Andrew was seconded from 2008-9 to work for the World Intellectual Property Organization (WIPO). Whilst at WIPO Andrew co-organised and presented at the ‘WIPO Forum on Intellectual Property & SMEs for IP Offices of OECD and EU Enlargement Countries’ (2008) in Cardiff, one of the few occasions this prestigious event has been hosted outside Geneva. Andrew achieved National recognition for ‘services to intellectual property and business in Wales’ with the award of an OBE by the Queen under her Birthday Honours List 2009. International speaking invitations have included presenting to the World Intellectual Property Organisation, the World Trade Organisation, the European Commission and the European Patent Office.
Andrew remains as the Director of IP Wales® and was responsible for the validation of our new LLM programme in Intellectual Property and Commercial Practice. Andrew is the module leader for International Intellectual Property Law, the Law of Intellectual Assets Management & Transactions and also lectures 'Oily IP' on our new LLM in Oil & Gas.
View all posts by Associate Professor Andrew Beale OBE