Lawyer Monthly - November 2021 Edition

Flavia Stefura Senior Associate, MPR Partners 6A Barbu Delavrancea Street, Building C, Ground Floor, 1st District, 011355 Bucharest, Romania Tel: (40-21) 310 17 17 Fax: (40-21) 310 17 18 E: flavia.stefura@mprpartners.com www.mprpartners.com www.mprpartners.uk Flavia Stefura is a key member of the advisory department at MPR Partners, being primarily involved in IP, data privacy, competition, consumer protection and M&A matters. Bringing a wealth of experience from her work on behalf of reputed international law firms present on the Romanian market, Flavia is also versed in corporate and commercial, employment, regulatory as well as administrative matters. Recently, she also received the Intellectual Property Award of Excellence during publishing house Finmedia’s Top Lawyers’ Gala 2021. MPR Partners is an international firm with offices in London and Bucharest. It offers expertise in business law, tax and insolvency law across the EU and beyond, and its teams are highly ranked by numerous prestigious legal directories, including The Legal 500, Chambers & Partners and Lexology Client Choice. Please be sure to view this article on the Lawyer Monthly website, where links to sources are provided. 68 WWW.LAWYER-MONTHLY.COM | NOV 2021 INTELLECTUAL PROPERTY - PROTECTING TRADE SECRETS AMID RAPID RECRUITMENT internet, and therefore the opportunities for exploiting IT services vulnerabilities will only increase in the following years. Exacerbating this is the decreasing global engagement of employees with their work. The trade secret landscape, therefore, will remain challenging for both small and large firms to navigate in the years to come. Are there any other notable challenges in the modern trade secrets landscape? One of the most challenging issues with respect to the use of trade secrets by employees is the situation where such trade secrets become integral to the employee’s skill and experience. The Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure expressly provides that it will not be used as ground for limiting employee mobility, especially limiting employees' use of experience and skills honestly acquired in the normal course of their employment. One such difficulty lies in that it is often difficult to separate trade secrets from skills of the employee. Moreover, the Directive does not stipulate if and whether the former employees can use or disclose a previous employer’s trade secrets which said employee has acquired in a lawful manner. Therefore, this type of use and disclosure of trade secrets remains a matter for the national laws of the Member States. This in turn creates additional uncertainty and costs for employers. As an employer, one should avoid employees who are willing to bring the competition’s unlawfully acquired trade secrets. These persons will likely do the same with the new employer’s trade secrets when the next opportunity arises.