Salt Ship Design as v Prysmian Powerlink SRL

Held, granting the application, that in deciding whether to make a publicity order pursuant to regulation 18 of the Trade Secrets (Enforcement, etc) Regulations 2018, the court was concerned with an assessment of whether a measure was proportionate and of what was appropriate, but regulation 18(3) did not also import a test of necessity; that the court had to have in the forefront of its analysis the specific matters set out in regulation 18(3), though the listed factors were not exhaustive and there might be other relevant factors bearing upon the exercise of the court’s discretion; that, on the facts, on the basis of findings made in the liability judgment, the trade secrets were valuable, satisfying regulation 18(3)(a); that even disregarding the conclusion on exemplary damages, which was under appeal, the findings in the liability judgment as to the defendant’s conduct in blatantly misusing confidential information to facilitate an outcome where it could obtain a ship built by the rival company with the benefit of the claimant’s design but at a significantly lower cost were sufficient to satisfy regulation 18(3)(b); that in relation to regulation 18(3)(c), the court had to form a common-sense view of the plausibility of the case that the misuse of confidential information had had an impact on the party whose trade secret had been misused, rather than requiring the party harmed to produce detailed evidence supporting its case of negative impact; that although the claimant had not produced detailed data supporting the case of a negative market reaction or identified particular projects that were lost, there was also sufficient evidence on the facts as to the negative impact on the claimant, satisfying regulation 18(3)(c); that each of paragraphs (a)–(c) in regulation 18(3) therefore favoured the making of a publicity order; that, furthermore, the policy reasons for publicity identified in recital (31) of the Trade Secrets Directive (and an equivalent provision) were applicable and supported the making of a publicity order, specifically publicity of the court’s decision would assist in providing a deterrent to future infringers; that since there was a case for further publicity and the notice as sought would have a deterrent effect, none of the defendant’s counter-arguments outweighed those factors favouring an order, although some amendments to the notice as proposed were needed to ensure it had no punitive effect, which was not the intention of publicity orders; but that a publicity order could still be made if it led people to think worse of the infringer, that effect not being punitive but rather an aspect of deterrence; and that, accordingly, the defendant had to publish a notice on the principal page on its website publicising the vessel, for a period of six months, setting out the court’s finding that it had misused the claimant’s confidential information in relation to the design of the vessel and providing a link to the liability judgment and the instant judgment, although, to avoid the order having any punitive effect, the notice was to state that nothing prevented the defendant from trading the vessel (post, paras 18–19, 26, 27–30, 31, 32, 33–40, 41, 42).

Dictum of Daniel Alexander QC in Philip Warren & Son Ltd v Lidl Great Britain Ltd [2021] FSR 35, para 167 not applied.