In October of last year I wrote a blog about the case of Salt Ship Design AS v Prysmian Powerlink SRL [2021] EWHC 2633 and the insight it offered into the operation of the Trade Secrets (Enforcement etc.) Regulations 2018 [TSR].

Mr Justice Jacobs notes that, “[F]ollowing judgment on the liability issues in this case a large number of issues arose for determination at a hearing of “consequential” matters arising from the judgment…[T]his (latest) judgment concerns an application by the Claimant (“Salt”) for a publicity order pursuant to the Trade Secrets (Enforcement, etc) Regulations 2018, SI 2018/597.”

Jacobs was of the view that paragraph (3) (a) – (c) of Regulation 18 should be at the forefront of the court’s analysis, which provides:

(3) In deciding whether to order a measure under paragraph (1) and when assessing whether such measure is proportionate, the court must take into account where appropriate—
(a)the value of the trade secret,
(b)the conduct of the infringer in acquiring, using or disclosing the trade secret,
(c)the impact of the unlawful use or disclosure of the trade secret,

Rejecting the need for a more stringent test of “necessity” before the court exercised its discretion [18], Jacobs considered it “appropriate” that the court should grant the publicity order sought by Salt. However, he found it would not be appropriate to require Prysmian to put a Notice on the home page of their website, rather the principal web page publicising the Leonardo da Vinci. Accepting case-law makes clear that a publicity order is not intended to be punitive Jacobs recognised that to ensure such a measure remained proportionate required wording advising web users that the court has not granted any relief which prevents Prysmian from trading the Leonardo da Vinci. Jacobs therefore determined:

“The Defendant shall display the following notice to all persons accessing the following Leonardo da Vinci page on the Prysmian Group website ( from an internet protocol (IP) address identifying the United Kingdom, until 30 June 2022, such notice to be in no smaller than 12-point type:

“On 30 September 2021 the High Court of Justice of England and Wales ruled that Prysmian Powerlink SRL had misused Salt Ship Design AS’s confidential information in relation to the design of Prysmian Powerlink SRL’s Leonardo da Vinci cable laying vessel. A copy of the full judgment of the High Court is available on the following link [link given]. On * December 2021, the High Court of Justice of England and Wales made further rulings in the case. A copy of the further judgment is available on the following link [link given]. The court has not granted any order which prevents Prysmian from trading the Leonardo da Vinci.”

This six month notice period being “appropriate” to the anticipated date of the official launching ceremony for the Leonardo da Vinci, although at the time of writing the Notice stills remains to be inserted into the web page.

Published by

Associate Professor Andrew Beale OBE

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.

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