Trade Secrets: India

QUESTIONNAIRE

Protection

Legislation and legal definition

1 What legislation governs the protection of trade secrets in your jurisdiction? How a ‘trade secret’ is legally defined?

There is no statute or legislation that governs the protection of trade secrets in India. However, rights in respect of trade secrets are enforced through contract law (Indian Contract Act, 1872)principles of equity or by way of a common law action for breach of confidence. The Delhi High Court, in the case of John Richard Brady & Ors v Chemical Process Equipment P Ltd & Anr (AIR 1987 Delhi 372), held the following:

These rules may, according to the circumstances in any given case, either rest on the principles of equity, that is to say the application by the Court of the need for conscientiousness in the course of conduct, or by the common law action for breach of confidence, which is in effect a breach of contract.

India is also a signatory of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). Under article 39(2), TRIPs allows members the flexibility to frame laws that prevent the unauthorised disclosure and use of certain information, provided this ‘information’ meets the following criteria:

· it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

· it has commercial value because it is secret; and

· it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

In Tata Motors Limited & Anr v State of Bengal (GA No. 3876 of 2008 in WP No. 1773 of 2008), the High Court of Kolkata relied on the definition of the term ‘trade secret’ in Black’s Law Dictionary and observed that a trade secret is a formula, process, device or other business information that is kept confidential to maintain an advantage over competitors. The information includes a formula, pattern, compilation, programme, device, method, technique or process:

· that derives independent economic value, actual or potential, from not being generally known or readily ascertainable by others who can obtain economic value from its disclosure or use; and

· that is the subject of reasonable efforts, under the circumstances, to maintain its secrecy.

The High Court of Bombay, in addition to the above, has laid down the following criteria in Bombay Dyeing and Manufacturing Co Ltd v Mehar Karan Singh (2010 (112) BomLR 375), for any piece of information to be considered a trade secret:

· the extent to which the information is known outside the business;
· the extent to which it is known to those inside the business, namely employees;
· the precautions taken by the holder of the trade secret to guard the secrecy;
· the savings affected and the value to the holder in having the information as against competitors;
· the amount of effort or money expended in obtaining and developing the information; and
· the amount of time and expense it would take others to acquire and duplicate the information.

Trade secrets are a subset of ‘confidential information’. While certain courts in India have used the terms ‘trade secret’ and ‘confidential information’ synonymously, other courts have clearly distinguished between the two and have held that the routine, day-to-day affairs of an employer, which are in the knowledge of many and are commonly known to others, cannot be called trade secrets.

Ownership

2 How is ownership of a trade secret established?

If a trade secret is the subject matter of an action, the proprietor, in order to establish his or her rights must provide at the very least, the nature of the information believed to be a trade secret and how it came to be in the possession of the proprietor (even if the details of the trade secret are not disclosed in the suit). In the absence of such information, the courts have denied relief to plaintiffs per Ambiance India Pvt Ltd v Shri Naveen Jain, (122 (2005) DLT 421). The courts will draw a distinction between general knowledge regarding the business of an organisation or the general skill and expertise of employees acquired through their employment in an organisation, and trade secrets that are protectable. Therefore, it is critical that proprietors can specify the information that may constitute a trade secret.

In some cases, this trade-secret information may consist of works created and developed by the proprietor that are the subject matter of copyright protection, for example client lists in the case of Diljeet Titus and Ors v Alfred A Adebare and Ors (2006(32)PTC609(Del)) or technical drawings in the case of John Richard Brady and Ors v Chemical Process Equipments Pvt Limited & Anr (AIR 1987 DEL 372). Therefore, the principles of authorship and ownership applicable to copyright would apply.

In other cases, the trade-secret information may have been acquired and the proprietor must demonstrate that he or she has acquired proper title to such information.

This means that such information will not be protected as a trade secret if it is derived or created independently by any person (not having access to the trade secret), using information that is available in the public domain.

Secrecy

3 What criteria are used to establish the state of secrecy of a trade secret before misappropriation or disclosure?

In the case of Bombay Dyeing, the High Court of Bombay laid down certain criteria for information to be considered as a trade secret. The first three criteria concern the state of secrecy. These include:

· the extent to which the information is known outside the business;
· the extent to which it is known by employees and others involved in the business; and
· the extent of measures taken by the employer to guard the secrecy of the information.

Trade secrets must be information used in trade or business whose dissemination is limited, discouraged or prohibited, and therefore the measures implemented by a company to do so are a good metric to establish the state of secrecy.

Information that is accessed by any person by virtue of their relationship to the proprietor of such information (such as employees or vendors) may bear with it an implied obligation of confidentiality or secrecy, whether or not expressly provided, either in a contract or by way of any other communication (especially if it is not otherwise available through other sources or in the public domain). In such cases, it must be shown that: (1) this information was not available to any person to whom it was not delivered by the proprietor him or herself; and (2) the implied obligation is supported by the facts and circumstances surrounding the correspondence, other conduct of the parties, etc (provided it meets the other criteria for trade secrets).

Commercial value

4 How is the commercial value of a trade secret established?

The economic and commercial value of a trade secret is derived from its secrecy in not being generally known, and the competitive advantage that it provides to its proprietor. The Bombay Dyeing case held that this value can be ascertained by factors such as (but not limited to):

· the savings affected and the value to the proprietor in having the information as against its competitors;
· the amount of effort or money expended in obtaining and developing the information; and
· the amount of time and expense that would be incurred by a third party if it were to acquire or duplicate this information.

Further, depending on the nature of the trade secret and its applicability to the business of the proprietor, standard valuation principles used for intangible property can also be applied.

Protective measures

5 What criteria are used to determine whether the rights holder has adopted reasonable protective measures to prevent disclosure and misappropriation of trade secrets?

The value of a trade secret is derived from its secrecy, and therefore courts will typically look at physical, technological, access control and contractual measures put in place by the proprietor or rights holder to prevent the disclosure of trade secrets.

Such measures may include: confidentiality agreements between vendors, employees, etc; technical and security measures put in place within the organisation to restrict access to trade secrets; technical measures taken to protect the organisation against cyberattacks; and clear and documented company policies dealing with protection of confidential information and trade secrets. Even in the absence of such measures, express acts of the proprietor, such as labelling information or correspondence as ‘confidential’, may also be considered sufficient and reasonable, in certain circumstances, to justify protection of the trade secret.

Confidentiality may also be implied. Therefore, facts and circumstances surrounding the access, disclosure and delivery of confidential or trade-secret information may also become relevant to establish whether the protective measures taken by the proprietor were reasonable.

Best practices

6 What best practices and internal policies should rights holders consider to ensure maximum protection of their trade secrets? (Consider the various scenarios with a significant risk of misappropriation and unauthorised disclosure of trade secrets, such as when dealing with government authorities and current and former employees, and during M&A and foreign investment transactions.)

Some practices that should be incorporated by companies to protect secrets are as follows:

· organisations should itemise and identify information that they believe constitutes a trade secret – not all information relating to the business of a company will be considered a trade secret by the courts, and such information should be reviewed periodically by the company;

· organisations should clearly mark information in physical or digital form as ‘trade secret’;

· access to trade secrets must be limited and controlled, using physical, technological, contractual and managerial measures;

· employees should not be permitted to access trade secrets from remote locations or remove such trade secrets from company premises;

· confidentiality agreements between employees and third parties, where an individual may be granted access to (even briefly) trade-secret information, such confidentiality obligations should continue after expiry or termination of these agreements;

· developing and implementing a robust trade-secret policy for the organisation, especially if such trade secrets form a critical part of the business value proposition; and

· managing risks associated with reverse engineering (that may expose trade secrets) through technological means, if the organisation is offering a technology product.

Misappropriation

Definition

7 What constitutes misappropriation of trade secrets?

While there is no legislation defining the misappropriation of trade secrets, the discovery of a trade secret by improper means (arising from civil, including breach of contract or tortuous wrongs or criminal acts) would constitute misappropriation of trade secrets.

Exclusions

8 Are any activities explicitly excluded from the scope of trade-secret misappropriation (eg, whistleblowing activities, independent discovery and reverse engineering)?

Courts in India do not apply the ‘inevitable disclosure’ doctrine that would prevent an employee from pursuing a legitimate profession or trade. Skills acquired by an employee during the course of his or her employment with an organisation and information retained in the mind of an employee may not be protectable as a trade secret. Furthermore, if trade-secret information is learnt through an independent discovery by fair and honest means, which includes reverse engineering, and if it otherwise does not constitute infringement of statutory intellectual property rights, it may not constitute misappropriation of a trade secret. Lastly, if the information itself was available in the public domain and not otherwise ‘secret’, it may not be protectable.

Elements of misappropriation

9 How can the rights holder prove trade-secret misappropriation?

To prove trade-secret misappropriation, the owner or rights holder of the same, must prove (Beyond Dreams Entertainment Pvt. Ltd. & Ors. vs. Zee Entertainment Enterprises Ltd. & Anr., (2016) 5 Bom CR 266), that:

· the information was a secret and not known generally, or not readily accessible to persons who deal with such information;

· the individual or owner of such information took reasonable steps to ensure and maintain its secrecy, and the information was imparted in circumstances importing an obligation of confidence; and

· there has been unauthorised use of that information to the detriment of the party communicating it, or there was a threat to use it.

Burden of proof

10 How is the burden of proof distributed in trade-secret misappropriation claims?

In the absence of specific legislation governing trade secrets, the general principles of the burden of proof are set out in the Indian Evidence Act 1872 Under Indian law, the burden of proof lies on the person asserting a fact or claim. The burden of proof lies on the person who would fail if no evidence was given by either side.

Extraterritorial acts

11 Can acts taking place outside your jurisdiction support a charge of trade-secret misappropriation?

In the absence of specific legislation governing trade secrets, the question of extraterritoriality would depend on the specific legislation that is attracted in the facts of the case, as well as The Code of Civil Procedure 1908 (CPC). Under section 20 of the CPC, a civil suit can, inter alia, be brought before a court within the local limits of which the cause of action arises (wholly or in part). Therefore, acts constituting misappropriation must take place in India (either in whole or in part), for an action to be brought in India.

The Information Technology Act 2000 (IT Act) has extraterritorial operation in certain cases. For instance, if a cyberattack is carried out outside India, but involves computer systems physically located in India, and this has resulted in misappropriation of trade secrets, the cyberattack will be actionable in India under the IT Act and the relevant law enforcement authorities will have jurisdiction to take action.

Enforcement proceedings

Causes of action

12 What causes of action are available and commonly asserted against misappropriation and unauthorised disclosure of trade secrets in your jurisdiction (e.g., statutory and common law claims such as breach of confidence where applicable and breach of contract)?

Causes of action that are commonly asserted against misappropriation and unauthorised disclosure of trade secrets are: breach of confidence; breach of contract; tort of misappropriation; and criminal offences, such as theft and criminal breach of trust. In certain cases, depending on the subject matter involved, copyright infringement may also be relevant.

Court jurisdiction

13 What criteria are used to establish the courts’ jurisdiction over trade-secret disputes? Are there any specialist courts for the resolution of trade-secret disputes?

There are no specialist courts for resolution of trade-secret disputes. A court’s jurisdiction over such disputes is governed by the general statutes governing civil and criminal disputes, namely the Code of Civil Procedure 1908 (CPC) and The Code of Criminal Procedure, 1973

For civil disputes relating to trade secrets, a court’s jurisdiction (for institution of a suit) is determined by section 20 of the CPC. A civil suit shall lie before any court within whose jurisdiction the defendant resides, carries on business or personally works for gain, or where the cause of action arises (whether in whole or in part). Further, the relevant pecuniary jurisdiction of courts will also be relevant in determining where a suit shall lie.

Having said that, disputes relating to trade secrets, similar to suits relating to other intellectual property, may fall within the category of commercial disputes, which are governed by the Commercial Courts Act 2015. It should be noted, however, that under the term ‘intellectual property’ in this Act, the terms ‘trade secrets’ and ‘confidential information’ are not set out specifically, unlike other types of intellectual property such as trademarks, patents, copyrights, etc. Only designated commercial courts shall be provisioned to adjudicate commercial disputes. Section 20 of the CPC is applicable to commercial disputes as well.

In the event a trade-secret dispute arises out of a contract that has an arbitration clause, the arbitral tribunal will have jurisdiction to adjudicate such disputes.

Procedural considerations

14 What is the typical format and timetable of proceedings?

Commercial disputes and civil suits follow the format prescribed under the CPC and the Commercial Courts Act 2015. After a suit is initiated before the relevant court having jurisdiction, a summons is issued by the court to the defendant, who is required to answer the suit within 30 days of the date of service of the summons, extendable up to 120 days. Timelines have been provided under the Commercial Courts Act 2015 for various stages of the suit, including inspection of documents by the parties, filing of affidavits of admission and denial of documents, filing additional documents (if any), holding case management hearings for framing of issues, fixing a trial schedule by the court, etc.

The pleadings (that is, the plaint and the written statement and counterclaim, if any) are followed by framing of the key issues in the dispute by the court (assisted by the parties), and thereafter, by the trial. The trial consists of the examination-in-chief (which may be oral as well as written by way of affidavits) of both parties, followed by cross-examination of the respective witnesses of the parties. After the trial, the court takes up the matter for final hearing and disposal.

In the interim, parties may choose to file applications for discovery, interrogatories, interim relief such as injunctions, appointment of court commissioners for search and seizure, etc.

Limitation periods

15 What limitation periods apply for trade-secret misappropriation claims?

There is no specific limitation period for trade-secret misappropriation claims. However, limitation of suits is governed by the Limitation Act 1963 and depends on the cause of action agitated in the suit. For breach of contract or a claim of tort, the limitation period is three years, from the date of breach or infringement. However, in trade-secret misappropriation cases, as there is a continuing breach, the cause of action will be of a recurring nature.

Secondary liability

16 To what extent can someone be liable for inducing or contributing to trade-secret misappropriation? Can multiple parties be joined as defendants in the same suit?

Multiple parties can be joined as defendants in the same suit. Common law principles of liability applicable to claims of torts and breach of contract would apply in cases of trade-secret misappropriation as well. Typically, a person contributing to the misappropriation of a trade secret, through any act or omission, may be directly and jointly liable for such misappropriation. Principles of agency and vicarious liability may also apply depending on the facts and circumstances of the case. Contributory infringement is also recognised under the Copyright Act 1957 and, therefore, if the subject matter is protected under copyright laws, such principles will apply.

In cases of criminal breach of trust or theft, any person aiding or abetting such offence would also be liable to be punished under the Indian Penal Code 1860

Obtaining and preserving evidence

17 What mechanisms are available to obtain and preserve evidence from defendants and third parties in trade-secret litigation?

During the course of a trade-secret litigation, a plaintiff can employ multiple strategies to obtain and preserve evidence, including an application for appointment of a local commissioner for search and seizure of infringing materials, an application for discovery and interrogatories, and an application for temporarily injuncting or restraining the infringing activities of the defendant or maintaining status quo. If there is a high risk of the evidence being destroyed by the defendant or third parties, courts may also be moved to issue such orders without notice to the defendant (that is, on an ex parte basis).

Expert evidence

18 What rules and standards govern the admissibility of expert evidence?

Expert evidence is permissible under Indian law (whether provided by an independent expert or an internal expert of an organisation). The admissibility of expert evidence is governed by the Indian Evidence Act 1872, and there are a limited number of cases where opinions are admissible as evidence. An expert whose opinion is sought to be brought on record must have special knowledge, skill or experience in any of the areas specified under section 45 and such knowledge must have been gathered by such expert by practice, observation or studies. The opinion of the expert must also be substantiated by giving reasons, for the same to be admissible.

Experts may testify on a variety of issues including foreign law, science, art, handwriting, usage or practice in a trade, etc. In trade-secret misappropriation cases, one or more of these areas may become relevant, depending on the subject matter of the trade secret.

The opinion of an expert, though relevant, will not take precedence over the testimony of a witness to a fact (which is the primary evidence).

Confidentiality during litigation

19 What measures may the court and litigants take to protect trade secrets during litigation (eg, non-public hearings and orders to preserve confidentiality)?

Courts in India permit litigants to take various steps to protect trade secrets from exposure to third parties or other litigants. Foremost of these is the practice of submitting information under sealed covers, which are only accessible to a judge for review. Further, a relatively newer practice is that of formation of confidentiality clubs, which ensure that trade-secret information is only made accessible to a limited number of persons under the aegis of a confidentiality agreement, and that any proceedings that involve review of the trade-secret information or arguments thereon are conducted in camera (without the presence of third parties in the courtroom), in the presence of only the members of the confidentiality club.

Defences

20 What defences are available and commonly asserted against trade-secret misappropriation claims?

The defences available would largely depend on the facts of each case but typically include the following:

· information is already known and in the public domain;

· information sought to be protected does not constitute a trade secret (even if it is confidential information);

· information has been disclosed by the plaintiff through negligence and failure to maintain secrecy;

· the defendant has arrived at the information through independent study, skill or labour (even if this includes reverse engineering) and without having access to plaintiff’s information; or

· the defendant does not have any express or implied obligation to maintain secrecy of the information disclosed to it.

Appeal

21 What avenues of appeal are available following an adverse decision in a civil suit? Is new evidence allowed at the appeal stage?

An appeal lies against those orders of a court in civil suits that are specified under Order 43 of the CPC. This is also applicable to commercial disputes, with some modifications. These orders include: orders returning a plaint; orders refusing to set aside dismissal of a suit; orders refusing to set aside an ex parte decree; and orders passed in relation to interim relief (Order 39), including grant or rejection thereof, contempt of interim relief and vacation of interim relief, etc.

Depending on the court of first instance, the first appeal may lie before the single judge of a high court or a division bench (two-judge bench). A second appeal shall lie only where a substantial question of law is involved or if the lower court passes an ex parte order or decree.

The commercial appellate court is required to endeavour to dispose appeals within six months of the date of filing of the appeal.

As a rule, additional evidence is not permitted in appeals, and appellate courts typically evaluate whether the lower court has properly appreciated the evidence already on record. Parties are, however, permitted to file an application before the appellate court to request admission of such additional evidence subject to certain conditions (under Order 41 Rule 27 of the CPC), including necessity in the interest of justice or the inability of the appellant to do so before the lower court, or because the evidence was not within the knowledge of the appellant before the lower court despite reasonable due diligence or other substantial cause. The court has discretionary powers to allow or reject such a plea.

Costs

22 What is the typical cost range of a trade-secret misappropriation suit? Can a successful litigant recover costs and attorneys’ fees?

The cost of litigation varies depending on the forum, the complexity of the matter, the duration of the litigation, and the cost of counsel and solicitors. Parties may also incur applicable statutory fees, such as court fees, stamp fees, etc. Other expenses relating to printing and notarisation of documents should also be factored in. Therefore, it is difficult to estimate the cost range of such a suit.

Successful litigants can seek recovery of costs and reasonable attorneys’ fees from courts. However, this remedy is discretionary and exercised sparingly.

The CPC provides for costs under section 35. It also makes special provisions for costs for causing delay in suit proceedings, and compensatory costs in respect of false and vexatious claims.

In commercial disputes, the Commercial Courts Act 2015 sets out the factors to be considered for this purpose, which include: the conduct of the parties; whether a party has succeeded on part of its case (even if that party has not been wholly successful); whether a party had made a frivolous counterclaim leading to delay in the disposal of the case; whether any reasonable offer to settle is made by one party and unreasonably refused by the other party; and whether a party had made a frivolous claim and instituted a vexatious proceeding wasting the time of the court.

While it is common for a successful litigant to recover some costs, the quantum of costs and attorneys’ fees typically granted are not commensurate to the actual costs incurred by the litigant.

If parties settle the dispute independently or by way of a court-appointed mediation process, the plaintiffs can, in certain courts, recover the court fees, either in full or in part (depending on the specific procedural rules of the relevant court).

Litigation funding

23 What litigation funding options are available (eg, third-party funding and contingency fee agreements)?

Contingency fee arrangements are not permitted in India.

Similarly, advocates in India cannot fund litigation on behalf of their clients. Third-party funding, however, is not prohibited in India (Bar Council of India v AK Balaji, AIR 2018 SC 1382).

Alternative dispute resolution

24 What alternative dispute resolution (ADR) methods are available to resolve trade-secret disputes?

There are no specialised ADR methods for trade-secret disputes, and the traditional ADR methods of mediation, conciliation and arbitration (in cases of breach of contract) or a combination thereof are available to litigants.

Enforcement risks

25 To what extent may enforcement of trade-secret rights expose the rights holder to liabilities such as unfair competition?

Enforcement of a trade-secret right alone is unlikely to expose the rights holder to liabilities such as unfair competition if other criteria for establishing a legitimate trade-secret right are met. However, such a defence cannot be ruled out. An alleged infringer may also pre-emptively initiate an action for declaration of groundless threats, upon receipt of a notice by the rights holder, if deemed fit.

Remedies

Injunctions

26 Under what circumstances can a rights holder obtain a preliminary or final injunction in a civil suit for trade-secret misappropriation?

The relief of an injunction, both at the preliminary and final stages in a suit, to restrain the defendant from using or disclosing the trade secrets, is available to plaintiffs or rights holders in India.

These injunctions are granted at the discretion of the court, primarily by applying the following tests (established in Gujarat Bottling Co Ltd v Coca Cola Co, (1995) 5 SCC 545):

· whether a prima facie case has been made out by the plaintiff;
· whether the balance of convenience is in favour of the plaintiff; and
· whether the plaintiff would suffer irreparable injury if the injunction is not granted.

Courts have also held that the object of an interim injunction is to protect the plaintiff against injury by violation of its rights, where such injury cannot be adequately compensated by damages. This holds especially true for trade secrets whose value is derived from their secrecy.

Therefore, the need for such protection of the plaintiff must be weighed against any injury that may be caused to the defendant from being prevented to exercise its legal rights.

To satisfy each of the above requirements, the plaintiff must at the outset clearly set out the trade secrets sought to be enforced (even if details are not provided). The plaintiff must also plead facts that disclose the commercial value of the trade secret and its importance to the plaintiff. Statements relating to competitive advantage offered by the trade secret will also be relevant. The nature and extent of use of the trade secret, both in scale and duration, is important to establish balance of convenience, as well as potential injury.

In cases relating to employer–employee relationships, an additional consideration of section 27 of the Indian Contract Act 1857 must be kept in mind. Any contracts or terms in restraint of trade are void and unenforceable under this provision. Therefore, if the plaintiff, being an employer, is seeking to enjoin the alleged defendant from securing a job with a competitor or elsewhere, on the basis of a confidentiality provision in an employment contract, such terms may not be enforceable.

Damages

27 What rules and criteria govern the award and calculation of damages for trade-secret misappropriation?

Litigants can seek damages and rendition of accounts of profit as a remedy in trade-secret misappropriation cases. Damages must be quantified and proved during trial before being awarded by the court. Damages may be liquidated damages, actual damages or punitive damages.

Liquidated damages, if not specifically quantified, will be required to be quantified as per the terms of the contract between the parties.

Actual damages will need to be proved through evidence (in relation to which witnesses may also be cross-examined). This will likely be a quantification of losses incurred due to disclosure of trade secrets or a valuation based on the notional market value of the trade secret itself. This can be supported by the report of an expert.

Lastly, punitive damages are typically based on the prerogative and discretion of the court, and granted in cases where the infringement or tort is egregious.

Other civil remedies

28 Are any other civil remedies available for wilful trade-secret misappropriation?

There are no additional civil remedies available in cases of wilful trade-secret appropriation.

However, apart from injunction and damages, other civil remedies available to a plaintiff or rights holder include orders granting return of trade secrets or delivery of materials containing trade secrets, and appointment of court commissioners for taking stock of the materials misappropriated by the defendant (for assistance in quantification of damages). Courts may even direct local police to assist court commissioners in carrying out appropriate search and seizure orders of the court.

Criminal remedies

29 What criminal remedies are available for trade-secret misappropriation? Under what circumstances will they be awarded, and what procedural issues should be considered when seeking them?

The Indian Penal Code 1860 (IPC) and specific subject-matter legislation, such as the Copyright Act 1957 (governing copyrights) and the Information Technology Act 2000 (governing electronic records), contain provisions setting out specific offences that may be punishable by imprisonment or a fine. There is no specific offence of trade-secret misappropriation. However, offences such as criminal breach of trust, theft or cheating may be applicable, in the facts of the case.

The penalty for criminal breach of trust is imprisonment of up to three years or a fine. A person is said to commit a criminal breach of trust if he or she dishonestly misappropriates or converts for his or her own use any property that has been entrusted to him or her, or dishonestly uses or disposes such property in violation of a contract (express or implied) or applicable law, or permits any other person to do so. Therefore, at the outset, the dishonest intention of the infringer or accused in misappropriating, converting, using or disposing of the property must be established by the complainant.

The procedural law relating to criminal proceedings is set out in the Code of Criminal Procedure 1973. An offence can be brought to the attention of the police through a complaint. If the offence is a cognisable offence under the IPC (having the penalty of imprisonment of more than three years), a police officer is mandated to register a First Information Report, and can initiate investigations and arrest without warrants. However, if it is not cognisable, the police are not obligated to initiate action and all action must be taken based on the orders of a metropolitan magistrate, who is required to evaluate a criminal complaint in the first instance, and order investigations, arrests, etc, as relevant.

The criminal justice machinery in India is marred by delays and is not the preferred enforcement option for rights holders, unless strategically beneficial, where the offence is egregious and merits such action and concomitant penalties, or the identity of the offenders is unknown and needs to be investigated.

Administrative remedies

30 What administrative remedies are available for trade-secret misappropriation? Under what circumstances will they be awarded, and what procedural issues should be considered when seeking them?

In the absence of a specific legislation governing trade secrets, there are no administrative remedies for trade-secret misappropriation in India, as it is governed entirely on the basis of common law principles (evolved through judicial precedent) and Indian contract law.

Update and trends

Key developments and future prospects

31 What were the key judicial, legislative, regulatory and policy developments of the past year in relation to the protection and enforcement of trade secrets? What are the prospects for future developments?

There have been no significant developments in the past year in relation to the protection and enforcement of trade secrets.

Law stated date

Correct on

32 Give the date on which the information above is accurate.

13 November 2020.

Authors:

Nandan Pendsey, Partner
Kirti Balasubramanian, Senior Associate
Akriti Kalra, Associate
Aashna Sheth, Associate

Published In:GTDT Lexology
Date: February 18, 2021