Appendix 6 Country Specific Questionnaires- IP & Commerecial Law Austria A. APPLICABLE ...

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Appendix 6
Country Specific Questionnaires- IP & Commerecial Law
Austria
A. APPLICABLE REGULATORY FRAMEWORK
1. Does the legislation of your jurisdiction provide specific provisions on the protection
of trade secrets?

The main provisions in Austrian legislation regarding the protection of trade secrets
are Secs. 11, 12, 13 and 26 Act against Unfair Competition (UWG – violation of
trade and business secrets) and Secs. 122 et seqq. Penal Code (Strafgesetzbuch –
for details see Criminal Law Questionnaire).

Furthermore, the following provisions also contain provisions on the protection of
trade secrets:
• Sec. 13 Patent Act (Patentgesetz): This provision requires the employee to
keep employee inventions secret prior to the acceptance of the invention by
the employer
• Sec. 115 (4) of the Labour Constitutional Act (Arbeitsverfassungsgesetz):
This provision requires works council members to keep secret any trade and
business secrets made known to them in the course of their function.

Sec. 15 of the Austrian Data Protection Act (Datenschutzgesetz) provides a more
general requirement of data secrecy regarding all data made available to the
employee during his activity for the Company secret, not withstanding any other
obligations of secrecy.

In commercial and IP law Secs. 11, 12 and 13 of the Act against Unfair Competition
are the most relevant provisions. They are criminal provisions within the Act against
Unfair Competition, but form the basis for civil law cease and desist orders and
damage claims.

Sec. 11 Act against Unfair § 11 UWG:
Competition:
(1)Wer als Bediensteter eines
(1) Anyone who, as an employee Unternehmens Geschäfts- oder
of an enterprise and during the Betriebsgeheimnisse, die ihm vermöge
duration of employment, discloses des Dienstverhältnisses anvertraut oder
without authorisation any trade or sonst zugänglich gemacht worden sind,
business secret which due to his während der Geltungsdauer des
employment has been entrusted or Dienstverhältnisses unbefugt anderen
has been made accessible to him, to zu Zwecken des Wettbewerbes mitteilt,
another party for competitive ist vom Gericht mit Freiheitsstrafe bis
purposes, shall be sentenced by the zu 180 Tagessätzen zu bestrafen.
court to a term of imprisonment of (2) Die gleiche Strafe trifft den, der
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up to three months or a fine of up Geschäfts- oder Betriebsgeheimnisse,
to 180 per diem rates. deren Kenntnis er durch eine der im
(2) The same punishment shall Abs. 1 bezeichneten Mitteilungen oder
apply to whoever, without durch eine gegen das Gesetz oder die
authorisation and for competitive guten Sitten verstoßende eigene
purposes, uses or discloses to Handlung erlangt hat, zu Zwecken des
others any trade or business secret Wettbewerbes unbefugt verwertet oder
which he has received by an andere mitteilt.
information as set forth in Para 1 (3) Die Verfolgung findet nur auf
above or by an act of his own which Verlangen des Verletzten statt.
is illegal or contrary to public policy.
(3) The offence shall be
prosecuted only upon request of the
injured party.

Sec. 12 Act against Unfair § 12 UWG:
Competition:
(1) Wer die ihm im geschäftlichen
(1) Anyone who, without authorisation Verkehr anvertrauten Vorlagen oder
and for competitive purposes, uses Vorschriften technischer Art zu
or discloses to another party any Zwecken des Wettbewerbes unbefugt
technical documents or verwertet oder anderen mitteilt, ist vom
requirements entrusted to him in Gericht mit Freiheitsstrafe bis zu drei
the course of business, shall be Monaten oder mit Geldstrafe bis zu 180
sentenced by the court to a term of Tagessätzen zu bestrafen.
imprisonment of up to three (2) Abs. 1 ist nicht anzuwenden, wenn
months or a fine of up to 180 per die Vorlagen oder Vorschriften vom
diem rates. Inhaber eines Unternehmens seinem
(2) Para 1 shall not be applicable when Bediensteten anvertraut worden sind.
the documents or requirements (3) Die Verfolgung findet nur auf
have been entrusted by the owner Verlangen des Verletzten statt.
of an enterprise to his/her
employee.
(3) The offence shall be prosecuted
only upon request of the injured
party.
Sec. 13 Act against Unfair § 13 UWG:
Competition:
Wer den §§ 10 bis 12 zuwiderhandelt,
Anyone who violates Secs. 10 through kann außerdem auf Unterlassung und
12 may furthermore be sued for a Schadenersatz in Anspruch genommen
cease and desist order and payment of werden.
damages.

2. If so, please indicate for each provision the context and field of law in which
protection is legally granted, using categories and subcategories that are deemed
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appropriate (such as for example unfair competition law, intellectual property law,
civil law, non contractual liability, law of tort, etc) and also provide the definition of
trade secrets for each field of law in which definition is provided. If no definition is
provided, please identify the definition generally acknowledged as the most
important in your jurisdiction (e.g. definition deriving from conditions required by
TRIPS Agreement – Art. 39.2; case law or doctrine of your jurisdiction).

In the field of unfair competition law, the Sections of the Act against Unfair
Competition Act apply and provide remedies within the range of civil and criminal
law. Only penal remedies are provided by the mentioned sections of the Penal Code
which are located in the field of criminal law. Under the provisions of the Penal Code
the person who was injured by the infringement can additionally claim compensation
of damages. In the field of patent law the sections of the Patent Act are relevant
with regard to protection of trade secrets and offer civil remedies (interim injunction,
claim for damages).

None of those provisions provide a definition for trade secrets as such. Due to the
fact that trade and business secrets are both protected by different Acts in different
fields of law, Austrian literature assesses that a unified provision containing a
universal definition of trade and business secrets in Austrian law has become less
likely. In Austrian literature and case law, the following standards for trade and
business secrets have been developed:
• Commercial or technical information or processes in relation to the business
of a company which are important for the competitive position of the
company (economic commercial value),
• only known to certain and limited circle of people (secret),
• which shall be kept confidential and
• there is a legitimate economic interest in the confidentiality of the
information or process.

3. If the law of your jurisdiction does not provide specific provisions on the protection
of trade secrets please:

(a) Indicate the legal provisions that can be used in order to secure protection
against infringement of trade secrets, providing the text of relevant provisions and
indicating the legal instrument(s) in which these provisions are set.

In addition to the already enlisted provisions, the Austrian law system provides other
resources offering protection of trade secrets, in particular Sec. 1 Paras 1, 4 and 5 of
the Act Against Unfair Competition:
Sec. 1 Act against Unfair Competition: § 1 UWG:

(1) Anyone who in the course of (1) Wer im geschäftlichen Verkehr
business 1. eine unlautere Geschäftspraktik oder
1. resorts to an unfair commercial sonstige unlautere Handlung anwendet,
practice or other unfair practice die geeignet ist, den Wettbewerb zum
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which is likely to distort competition Nachteil von Unternehmen nicht nur
not only insignificantly to the unerheblich zu beeinflussen, oder
detriment of enterprises, or […]
[…] kann auf Unterlassung und bei Verschulden
may be sued for injunctive relief and auf Schadenersatz in Anspruch genommen
case of default for payment of werden.
damages. […]
[…] (4) Im Sinne dieses Gesetzes bedeutet
(4) For the purposes of the Act the […]
meaning the following shall mean 2. „Geschäftspraktik“ jede Handlung,
[…] Unterlassung, Verhaltensweise oder
2. “commercial practice” any act, Erklärung, kommerzielle Mitteilung
omission, conduct or declaration, einschließlich Werbung und Marketing
commercial communication including eines Unternehmens, die unmittelbar mit
advertising and marketing of an der Absatzförderung, dem Verkauf oder der
enterprise which directly relates to Lieferung eines Produkts zusammenhängt;
sales promotion, sales or supply of a […]
product; (5) Der Unternehmer hat in Verfahren auf
[…] Unterlassung oder Schadenersatz nach Abs
(5) In proceedings for injunctive relief 1 bis 3 die Richtigkeit der
or damages according to Para 1-3, the Tatsachenbehauptung im Zusammenhang
entrepreneur has to prove the mit einer Geschäftspraktik zu beweisen,
correctness of allegations of facts in wenn ein solches Verlangen unter
connection with a commercial practice Berücksichtigung der berechtigten
if such a claim seems to be appropriate Interessen des Unternehmers und anderer
in consideration of the justified Marktteilnehmer wegen der Umstände des
interests of the entrepreneur and the Einzelfalls angemessen erscheint.
other market participants in the
individual case.

Sec. 1 of the Act against Unfair Competition applies in case an employee has already
left his employment.
(b) Indicate for each provision the context and field of law in which protection
is legally granted, using categories and subcategories that you deem appropriate
(such as for example unfair competition law, intellectual property law, civil law, non
contractual liability, law of tort, etc) and also identify the definition generally
acknowledged as the most important in your jurisdiction (e.g. definition deriving
from conditions required by TRIPS Agreement – Art. 39.2; case law or doctrine of
your jurisdiction).
The relevant section in the field of the law against unfair competition, Sec. 1 of the
Unfair Competition Act, provides civil remedies, namely injunctive relief and
compensation of damages. Austrian courts adjudicated on obtaining trade or
business secrets by fraud or breach of confidence and granted protection under Sec.
1 Act against Unfair Competition.
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4. Are trade secrets considered to be intellectual property and protected as an
intellectual property right? Is the legislation that implemented the Directive on
enforcement of intellectual property rights (Directive 2004/48/EC of the European
Parliament and of the Council of 29 April 2004 on the enforcement of intellectual
property rights) applicable to the protection of trade secrets?
Since Austrian law does not provide any definition, neither for intellectual property
as such nor for trade secrets, the question whether trade secrets are considered to
be intellectual property cannot be answered by using legal definitions.
Specific laws such as the Copyright Act, Trade Mark Act, Design Act, Patent Act and
Utility Model Act offer protection for intellectual property (for example trade marks,
designs, patents, utility models). The protection of trade secrets is granted by the
Act against Unfair Competition. However, the Act against Unfair Competition does
not provide for information rights for the owner of the trade or business secret with
regard to the alleged infringer.
The Directive 2004/48/EC was implemented into the Patent Act, the Semi-Conductor
Act, the Trade Mark Act and the Copyright Act. The Unfair Competition Act has not
undergone any amendments based on the implementation of Directive 2004/48/EC.
5. Which different types of trade secrets are recognised in your jurisdiction (e.g.
manufacturing technology, commercial know how such as price or customer lists)?
How, if at all, are they treated differently by the law?
Austrian law does not differ between trade secrets and business secrets. However,
trade secrets are often referred to as facts and knowledge of a mostly commercial
nature, which are known only to persons acquainted with the internal course of the
business, and business secrets referred to more technical factors. As the legal
consequences are identical, no differentiation has to be made between trade and
business secrets.
6. What are, in your opinion, the inadequacies of the law on trade secrets in your
jurisdiction? What improvements would you suggest? Would a European harmonized
and common legislation for the definition and effective protection of trade secrets be
feasible and positive? Are there any provisions or practices, including business or
market practices to protect trade secrets, peculiar to your jurisdiction that you
consider as a positive asset? Are there any current proposals for new legislation?
The protection of trade and business secrets is placed in the centre of controversial
interests: the demand in freedom of information and free speech on the one hand
and the demand to effectively protect the privacy regarding personal and proprietary
aspects on the other hand. Furthermore, as the provisions on the protection of trade
secrets are scattered over different fields of law, there is no uniform interpretation
and varying case law. Nevertheless, a harmonized and common legislation for the
definition and effective protection of trade and business secrets would enable the
owners of trade and business secrets to proceed on a more standardized basis and
to allow for a uniform level of protection. This would provide an enormous advantage
and more security and transparency with regard to the trade and business secret
protection. Furthermore, such harmonization would support and further the
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recognition of trade and business secrets as valuable assets of many companies. The
most important feature would be to strengthen the position of the owners of trade
and business secrets, especially with regard to civil procedural aspects.
There are no current proposals for new legislation in Austria.
7. For your jurisdiction please provide a list of leading case-law, together with an
indication of the relevant issues dealt with in each case. The aim of this list is to give
an overview of the general principles applicable to the protection of trade secrets in
your jurisdiction.
• Austrian Supreme Court: OGH 4 Ob 94/86 – Tenniskartei (tennis files), ÖBl
1988, 12; OGH 8 ObA 311/01w – Kopieren der Kundendatei (copying of
customer files), ÖBl 2003, 127;. OGH 9 Os 7/70 – Farbbedrucken von
Spielzeugwaggons (colour-coating of toy wagons), ÖBl 1971, 26: These
decisions provide examples of the definition of trade and business secrets.
• Austrian Supreme Court: OGH 4 Ob 309/98i – Erinasolum, ÖBl 1999, 299:
The Austrian Supreme Court granted an action for accounting in a case of
unfair passing-off by analogous application of Sec. 151 Patent Act.
• Austrian Supreme Court: OGH 17 Ob 21/09a – Manpower VIII, ÖBl 2010,
275: The Austrian Supreme Court granted an action for accounting in a case
of unfair passing-off by analogous application of Sec. 151 Patent Act.
• German case law is also essential for the interpretation of Austrian legal
provisions. Thus, the decision of the German Federal Court of Justice, BGH I
ZR 72/59 – Wurftaubenpresse (Clay pigeon press), GRUR 1961, 40 has
frequently been cited in Austria and sets out that a detailed description of the
trade and business secret is necessary only insofar as this is essential for
legal enforcement.
• Another German judgement regards the civil remedies available with regard
to the damages options available: German Federal Court of Justice, BGH I ZR
112/75 – Prozessrechner (process computer), GRUR 1977, 539. This
judgement sets out the admissibility of the three options to claim damages
by reference to the fact that the legal position of the owner of a business
secret is highly similar to the legal position of the owner of an intellectual
property right.
8. For your jurisdiction please provide a list of literature, studies, surveys, other
reference material, together with a brief summary of the relevant issues dealt with
in each of the material reported. The aim of this list is to give an overview of the
doctrine and perspective on the protection of trade secrets in your jurisdiction.
• Andreas Wiebe and Georg E. Kodek (eds.), Kommentar zum UWG – Gesetz
gegen den unlauteren Wettbewerb (Commentary on the Act against Unfair
Competition), Manz, 2009.
The commentary on the Act against Unfair Competition provides literature
and case law as well as detailed input on the protection of trade and business
secrets in its Secs. 11, 12, 13 and 26.
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• Lothar Wiltschek, UWG – Gesetz gegen den unlauteren Wettbewerb (Act
against Unfair Competition), Manz 2007.
This commentary provides a short overview of the most important topics and
amendments of the Act against Unfair Competition based on the amendment
2007. A rough overview of the protection of trade and business secrets is
contained in Secs. 11, 12, 13 and 26.
• Maximilian Gumpoldsberger and Peter Baumann (eds.), UWG – Bundesgesetz
gegen den unlauteren Wettbewerb (Act against Unfair Competition), Verlag
Österreich 2006.
This commentary on the Act against Unfair Competition provides literature
and case law as well as detailed input on the protection of trade and business
secrets in its Secs. 11, 12, 13 and 26.
• Thomas Mildner, Arbeitsrechtliche Geheimhaltungspflicht im Lauterkeitsrecht
(employment law based confidentiality obligation in unfair competition
matters), ÖBl 2011/66.
The author details the implications of, inter alia, the infringement of trade
and business secrets and the impact on the application of unfair competition
claims and remedies.
• Christian Eisner und Florian Schiffkorn, Geheimhaltung von Beweisen zur
Wahrung von Geschäftsgeheimnissen (Confidentiality of pieces of evidence
for the protection of trade secrets), ZVB 2010/43.
Review of the ECJ judgment C-450/06 - Varec SA v. Belgium, regarding the
confidentiality of pieces of evidence in order to secure and ascertain the
confidentiality of trade secrets.
• Elisabeth Schöberl, Beweis des Gegenteils und Schutz der Geschäfts- und
Betriebsgeheimnisse (Proof to the contrary and protection of trade and
business secrets), ÖJZ 2005/17.
This article deals with proceedings regarding the infringement of process
patents and the consideration of trade and business secrets in this respect.
The author sets out the current legal framework and suggests amendments
to improve the protection of trade and business secrets.
• Michael Schramböck, Der Schutz von Betriebs- und Geschäftsgeheimnissen
nach Beendigung des Arbeitsverhältnisses in Österreich und den USA im
Rechtsvergleich (Protection of trade and business secrets after termination of
the employment in Austria and the US in comparative law), ÖBl 2000, 3.
B LITIGATION AND ENFORCEMENT
1. What elements must be established in order to commence legal proceedings for
unauthorised use, unauthorised disclosure, misappropriation, or any form of trade
secret infringement?
To commence legal proceedings based on the Act against Unfair Competition, it is
necessary to establish the following elements:
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• The existence of a trade or business secret: such secret is either based on a
confidentiality duty based on the employment relationship, a secret which has
been entrusted or made accessible in the course of the employment
relationship and the disclosure of which would infringe legitimate economic
interests of the owner of the company.
• The fact that the trade or business secret has been entrusted or made
accessible to the employee in the course of the employment activities.
• The infringer’s imminent intent to use in an unauthorised manner or disclose
the trade or business secret (for competitive purposes), and
• The owner’s legitimate economic interest in confidentiality of the information:
the use or disclosure of the trade or business secret must be capable of
infringing the legitimate interest of the owner of the business.
The offence will be prosecuted only upon request of the injured party. As already
mentioned above, the provisions of the Act against Unfair competition are criminal
provisions which form the basis for civil law cease and desist orders and claims for
damages.
2. What civil remedies are made available? Are the remedies cumulative?
The civil remedies made available under the Act against Unfair Competition are as
follows:
• cease and desist orders,
• removal of the infringement (e.g. to return or destroy infringing information
or items), and
• damage claims.
Although the Act does not envisage rendering of accounts, the Austrian Supreme
Court has granted the rendering of accounts in certain cases.
The above enlisted remedies may be cumulated. Damages may furthermore also be
based on contractual provisions (penalties).
3. Defendants misusing trade secrets are often dishonest. Is it possible to obtain ex
parte orders to search premises and computer systems for misappropriated data and
to require the Defendant to provide information as to the whereabouts of documents
and files containing such data? [in civil proceedings]
Under Austrian civil law, it is up to the applicant to substantiate the facts to be
proved as well as the evidence required. Secs. 384 et seqq. of the Code of Civil
Procedure (Zivilprozessordnung) provide for remedies to preserve evidence. These
concern evidence by inspection, the hearing of witnesses and evidence by court
experts. Preservation of evidence can be ordered by the court if the plaintiff proves
that the evidence would otherwise be lost or presenting the evidence would
otherwise be hindered. In case of imminent danger, preservation of evidence may
be ordered by the court ex parte.
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According to Sec. 378 of the Code of Enforcement (Exekutionsordnung) the court
may impose interim injunctions upon application to secure the rights of one of the
parties.
4. In civil proceedings, what difficulties have plaintiffs encountered in enforcing trade
secret legal protection in your jurisdiction? In this regard you should consider the
following:
(a) What forms of interim relief, if any, are or are not available? E.g.
preliminary or interim injunctions, expedite action on the merits – cease and desist
action?
Under Austrian law, the forms of interim relief are preliminary injunctions and cease
and desist orders. The court can issue interim injunctions if the claimant provides
sufficient information on the impending or already committed infringement. Interim
injunctions are a common tool to deal with infringements of trade and business
secrets. However, they are only available to secure cease and desist as well as
removal claims.
(b) Are final injunctions time limited? Do they require to be confirmed through
an ordinary proceeding?
In general, injunctions are not time limited. Preliminary injunctions do not need to
be confirmed through ordinary proceedings. However, upon application of the
defendant, the court has to order principal proceedings and undergo ordinary
proceedings.
(c) What is the average duration and cost of proceedings from initiating the claim to
final judgment?
The average duration of interim injunction proceedings varies from several days to
several weeks. However, they usually are swift proceedings, based on the
consideration that interim injunctions shall provide immediate (interim) remedy.
The duration of main proceedings may take about from several months up to over a
year from filing the claim to the decision in the first instance. The duration will also
depend on the evidence in question and the judge in question.
The costs of proceedings will vary from case to case. Average costs will amount to
approx. EUR 10.000,- to EUR 25.000,- (again depending on the case at hand).
(d) Are cases involving technical trade secrets heard by specialist judges?
Under Austrian law, commercial courts will hear trade secret matters based on the
Act against Unfair Competition. Such courts are composed of judges who are experts
in commercial matters.
(e) What measures are put in place to protect the secrecy of information
before and during the proceedings? (e.g. can the public be excluded from the
proceedings, have the parties to prove their claims and file the documents
evidencing their claims, what are the available measures to protect trade secrets in
discovery and seizure actions)?
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Sec. 26 of the Act against Unfair Competition envisages that the general public may
be excluded form the trial upon application, if a public hearing would endanger a
business or trade secret. This regards both penal charges and the hearing of a claim
under civil law based on the Act against Unfair Competition.
(f) Approximately how many trade secret actions are heard by the civil courts in your
jurisdiction each year? What trade secrets are mainly the subject matter of court
litigations (for example manufacturing processes, products specifications,
commercial/financial information, etc)? What is the average output of trade secret
actions heard by the civil courts in your jurisdiction?
As there is no public register that enlists the court cases heard and the respective
subject matters of such court cases, it is hard to provide an answer to this question.
From our experience, there is no significantly high number of trade secret cases.
(g) Are there any other issues of which you are aware which make
enforcement of trade secrets difficult?
As it is up to the applicant to substantiate the facts to be proved and the evidence
required, the enforcement of trade and business secret infringement is indeed rather
difficult. There is no practical way to obtain evidence from the opponent in civil
proceedings under Austrian law.
5. What defences are available to the defendant in a trade secrets action?
As a defence strategy, the defendant could, inter alia, invoke that
• the information in question is no trade or business secret as such,
• he has not misappropriated the trade or business secret in an unlawful way,
• he has legally obtained knowledge of the information,
• he has independently developed the trade or business secret.
6. What is the requisite that is most considered by the courts of your jurisdiction (e.g.
secrecy, commercial value, importance for the relevant business, adoption of
adequate measures to protect secrecy, others) in determining whether to grant or
not protection to trade secrets? How the trade secrets owner is requested to prove
this importance?
The requisite considered most important will depend on the facts of the case at
hand. Generally speaking, the higher the commercial value of the trade or business
secret and the greater the efforts to keep the information secret, the higher the
need to grant protection of a trade or business secret. In practice, the question
whether the trade or business secret is indeed secret and not known to the public
will mostly require expert knowledge.
7. As to award of damages:
(a) What are the available options?
There are three available options:
• Compensation of actual economic loss, including lost profits
• Recovery of the infringer’s profit
• Licence analogy
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