SALT SHIP DESIGN AS v PRYSMIAN POWERLINK SRL

A publicity order under regulation 18 of the Trade Secrets (Enforcement, etc) Regulations 2018 requires an assessment of appropriateness and proportionality. Necessity is not an additional or stricter test. The court should place the regulation’s listed factors at the forefront of its analysis, while retaining discretion to consider other relevant matters. Publicity may serve deterrence and inform interested market participants. The order should be effective and proportionate, including by identifying suitable platforms, limiting its duration, and avoiding a misleading impression that unrelated lawful activity is restrained. A publicity order is not punitive, although reputational consequences may form part of its deterrent effect.

Following a liability judgment finding that Prysmian had misused Salt’s confidential design information in relation to a cable-laying vessel, Salt sought a publicity order under regulation 18 of the Trade Secrets (Enforcement, etc) Regulations 2018. Salt proposed publication of a notice on Prysmian’s website. Prysmian opposed the order, relying on existing publicity, proportionality, the scope of the proposed audience, possible misunderstanding, and the pending possibility of an appeal. The central issues were whether publication was appropriate and proportionate, what factors governed that assessment, and what form and duration the order should take.

1. The application was granted in principle. Regulation 18 confers a discretion to order appropriate measures for disseminating information concerning the judgment. The statutory requirement of proportionality does not justify substituting a test of necessity. The relevant question is whether the proposed order is appropriate and proportionate.

2. The factors in regulation 18(3) should be at the forefront of the analysis, although they are not exhaustive. The value of the trade secrets, Prysmian’s conduct, and the impact of the misuse on Salt all favoured publication. The court was entitled to form a common-sense view of the plausibility of market impact without converting the application into a mini-trial on quantum.

3. The policy in recital (31) of the Trade Secrets Directive supported publication as a deterrent to future infringers and as a means of informing sections of the public with a legitimate interest in the vessel. The reasoning in Duchess of Sussex v Associated Newspapers Ltd and Samsung Electronics (UK) Ltd v Apple Inc supported the conclusion that publicity orders may be desirable where they serve those purposes.

4. The order had to be targeted and proportionate. Publication was directed to the webpage dedicated to the Leonardo da Vinci, rather than the Prysmian Group home page. The notice was to remain until 30 June 2022, allowing a reasonable period for sporadic visitors to see it and coinciding with an anticipated vessel-launching ceremony. The court also required wording making clear that no order prevented Prysmian from trading the vessel, thereby avoiding a misleading or punitive effect.

5. The order was not undermined by the possibility of appeal or settlement. The proposed appeal did not challenge the findings of misuse relevant to the publicity order.

First-instance decision. The judgment records a previous liability judgment, [2021] EWHC 2633, and states that permission to appeal on limited issues was postponed pending determination of the exemplary-damages claim.