On 17 August EUIPO released a report examining the current level of trade secrets litigation, as well as the profiles of the parties involved and the courts dealing with trade secrets matters.

The study itself covers all 28 EU Member States and contains a mapping of the current national legal systems for the protection of trade secrets, competent courts and procedures in place, including remedies against the unlawful acquisition, use or disclosure of trade secrets.

Find further information and the link to the full text of the study, here.

This Bulletin issue is dedicated to IP and fashion focusing on the crucial role played by IP in protecting the products of this creative and vibrant industry.

The European IPR Helpdesk presents, on an introductory article, the different IP tools available to protect fashion designs, while the next contribution by Matej Michalec, lawyer at V4 Legal in Bratislava, develops the topic of IP protection tools in the European Union for the fashion industry, highlighting the issue of design protection and its overlap with copyright.

Axel Ferrazzini, Managing Director at 4iP Council, gives some useful hints on how to protect inventions in the fashion field, revealing that patent protection of fashion items is far from being a recent topic.

Then, EUIPO provides an article on the increased prevalence of counterfeiting practices in this sector, and the Federation of the European Sporting Goods Industry (FESI) focuses on the rise of online counterfeiting in the sporting goods industry and the measures available to tackle this problem.

In addition, we have interviewed Claudia G., a Spanish fashion designer who provides us with an insight into the work of designers and how they address IP matters.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new IP and fashion quiz and our usual patent quiz.

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Case

We are several partners involved in the preparation of a project proposal. For this purpose, we have signed a MoU/NDA. What happens if a new entity joins the partnership? Should we revise the MoU/NDA? Can we sign a separate MoU/NDA only with the new organisation and just inform the other parties? Alternatively, could bilateral MoU/NDAs between the main applicant and each individual partner be enough?

Answer

In case a new entity joins the partnership formed in relation to the project proposal, this entity cannot automatically become a party to the agreements already in place (NDA and/or MoU). Two options are possible to include this new partner as a party:

• The first option is to amend the whole agreement, which will in principle require the signature of all parties.
• An easier option could be the signature by the new partner and the coordinator of an accession form. The advantage of an accession form is that it does not require the signature of all partners all over again: the coordinator informs them all and signs the form if everyone agrees. This option is possible provided that the coordinator has a mandate to do so from the other partners.

We would however advise against the solution of concluding bilateral MoU/NDAs between the coordinator and each partner. Legally speaking indeed, there is a difference between having a global NDA/MoU between all partners (where each signatory is bound to respect the confidential information disclosed by everyone else, and protected against disclosures to anyone else), and having separate agreements only signed by the coordinator. While these seem easier to implement, they do not create the same contractual obligations amongst the parties. In that case, the various partners would be bound to confidentiality clauses only to the coordinator, not amongst themselves. They would not be directly liable to the other partners in case they breach their confidentiality obligations, and vice versa. This may make enforcement matters difficult; for this reason we would recommend sticking to a single agreement.

This new case study tells the story of a cooperation between the Department of General Biophysics at the University of Łódź, Poland and the GRAVITA Fertility Clinic. The case study explains how the two partners developed a collaborative research project with the help of the Enterprise Europe Network and how they managed both their IPRs and IP strategy.

The World Intellectual Property Organization (WIPO) has recently published an article regarding trade secrets, which provides a quick overview of this "hidden right". Learn how trade secrets are regulated in the EU and in the US; how they can be used to protect inventions in comparison to patents, and how they can prove particularly beneficial for SMEs.

Check this interesting article and for further information on trade secrets, consult the European IPR Helpdesk fact sheet "Trade secrets: an efficient tool for competitiveness".

Would you like your IP success story to be known by thousands of people around Europe?

What about becoming a source of inspiration to SMEs, institutions and researchers?

Tempted?

Then, tell your story as one of the European IPR Helpdesk's case studies and we will spread your success all around Europe!

Case studies are part of the range of publications developed by the European IPR Helpdesk in order to increase awareness of IP. Case studies contain concrete examples on how SMEs, institutions or academics use IP to achieve business success.

The European IPR Helpdesk disseminates case studies free of charge to an audience of more than 13,000 people through its website and through its newsletters, with around 8,000 subscribers.

Check our library if you would like to find out more about our case studies and contact the European IPR Helpdesk's IP advisors, Alejandra Aluja (alejandra.aluja@iprhelpdesk.eu) and Paula Barnola (paula.barnola@iprhelpdesk.eu), if you would like your case study published by the European IPR Helpdesk.

We are looking forward to hearing about your success story!

Transforming the results of R&D into commercially viable products is a business challenge that must be carried out in conformity with a coherent IP strategy. Such a strategy helps save time and resources. Additionally, a sound IP strategy is a key element in avoiding and fighting against infringement and unfair competition practices carried out by competitors. 

In this new case study, TNtech, a Slovakian SME, tells us about the main measures adopted within the framework of its IP strategy and shares some useful advice with us. 

The European Union Intellectual Property Office (EUIPO), through the European Observatory on Infringements of Intellectual Property Rights, has recently released an EU-wide study entitled "Protecting Innovation Through Trade Secrets and Patents: Determinants for European Union Firms".

This study uses data from the Community Innovation Survey for 24 Member States, which examines the economic importance of trade secrets and their relationship with patents.

Three main findings emerge from this study :

• The use of trade secrets is higher than the use of patents for most types of companies (although it is particularly prevalent among SMEs), in most economic sectors and in all Member States.
• Market novelty and innovation in tangible goods are associated with a preference for patents while process and service innovations are more often protected through secrecy.
• There is complementarity between the use of trade secrets and patents—many companies use both methods to protect their innovations.

These results will provide a basis for policy-makers and companies to further develop policies in this area following the adoption of the Trade Secrets Directive in 2016.

A trade secret is confidential information in the context of business, commerce or trade. Trade secrets often constitute valuable resources to many companies whose assets may, for instance, not be patentable but have a great commercial value and therefore need to be protected.

This fact sheet illustrates the importance of trade secrets for businesses and provides insight into trade secret protection, which could prove beneficial in particular to Small and Medium-sized Enterprises (SMEs).

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Last week the European Parliament has approved the text of a proposed Directive for the protection of trade secrets in the European Union.  Once approved by the European Council, the Directive will be binding on all EU member states and will require member states to enact national legislation that meets certain minimum requirements for the protection of trade secrets.

The directive introduces an EU-wide definition of “trade secret”, meaning information which is secret, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret.

Furthermore, it would oblige EU member states to ensure that victims of misuse of trade secrets are able to defend their rights in court and to seek compensation.

The approved text of the Directive is available here.