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 (https://www.prysmiangroup.com/en/new-vessel-leonardo-da-vinci) 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.
