Freshfields

Firm overview:

Anglo-German international firm Freshfields’ trade secrets practice is respected by peers and is principally found in the UK, Germany, Austria, the Netherlands, as well as in the US.

Freshfields has been advising leading global industrial and tech businesses on the implications of the new EU’s digital legislation on trade secret protection—for example the EU’s Data Act and the Digital Services Act.

In September 2024, Freshfields Bruckhaus Deringer announced that it would roll out a brand refresh in October, in which it will revert to being called Freshfields. This was the then-UK firm’s name prior to its twin mergers in 2000 with German firm Deringer Tessin Herrmann & Sedemund, and German–Austrian firm Bruckhaus Westrick Heller Löber.

Reports suggested the rebrand was aimed to smooth the firm’s path to a US merger where the UK’s ‘Magic Circle’ group of firms are increasingly focused in the wake of Allen & Overy’s merger with Shearman & Sterling in May 2024.

On trade secrets, Freshfields has advised on leading cases in multiple jurisdictions, such as the first Supreme Court cases in Austria and Germany concerning the EU Trade Secret Directive.

The firm is experienced in large-scale data-driven cases and its Client Delivery Group gathers diverse skills from the Freshfields Hub, Lab and Innovation teams to generate efficiency savings for clients.

Examples of the corporate firm’s characteristic mix of transactional trade secrets advice include an award–winning role acting for the London Stock Exchange Group on its multibillion-dollar strategic tech transformation partnership with Microsoft; advising Mars on its acquisition of the public company Hotel Chocolat Group; and advising Aston Martin Lagonda on its transformational collaboration to develop electric vehicles.

Freshfields regularly comments on trade secrets developments in its Technology Quotient blog. Recent articles include: “The Data Act and the EU’s Digital Agenda—striking a balance in trade secret protection?”; “WorkLife 2.0: The impact of Austria’s Whistleblower Protection Act on trade secret protection”; and “The Digital Services Act and its Impact on the IP and Trade Secrets Landscape”.

German partners Lutz Riede, Tobias Timmann and Matthias Hofer wrote the EU chapter on trade secrets protection in a recent comparative international guide.

Team overview:

Freshfields’ trade secrets work is typically led by the IP group, collaborating with employment lawyers, and white collar and commercial litigators, with the corporate firm also active on the transactional aspects of trade secrets matters. The firm has 13 partners engaged in significant activity in trade secrets across five offices —the UK, Germany, Austria, the US and the Netherlands.

Key lawyers include:

UK: Christopher Stothers, an experienced cross-border patent litigator; Giles Pratt, head of the intellectual property and technology group, and co-head of the international data practice and the firm's tech transformation and AI initiatives (such as the Freshfields TQ platform); patent litigator Laura Whiting; and David Brooks, an advisor to corporates and private equity sponsors on IP and commercial issues.

Germany: patent litigators Frank-Erich Hufnagel and Wolrad Prinz zu Waldeck und Pyrmont; Matthias Koch, an advisor on litigation, transactional and advisory matters for technology and consumer goods clients; Norbert Nolte, an investigations specialist; and Tobias Timmann, an intellectual property and tech litigator.

Netherlands: Rutger Kleemans, a patents and trade secrets adviser; Jelle Drok, a technology litigator; and Mark Egeler, a data and technology regulatory and litigation matters partner.

Austria: Lutz Riede, an adviser on complex tech and IP matters in the global Dispute Resolution group; and Matthias Hofer, an adviser on complex transactions and disputes in technical industries.

US: David Livshiz, who represents clients in complex commercial disputes, criminal and civil fraud actions, and bankruptcy litigation; and Kristen Riemenschneider, who represents life sciences companies on significant transactions and collaborations.

Key matters:

• Freshfields advises the London Stock Exchange Group (LSEG) on IP and other aspects of its 10-year, multibillion-dollar strategic partnership with Microsoft Corporation.

The Freshfields London IP team of partner Giles Pratt, counsel Tom Dye, senior associate Tom Hingley, associates Max Smith and Taybah Siddiqui, led the transaction, with a large group across the firm.

The work comprises the development of a digital exchange infrastructure based on blockchain and cloud technology, and the use of AI in connection with the partnership—including the creation of bespoke generative AI models and the use of AI in connection with sensitive, proprietary data.

Other initiatives include: the interoperability of Workspace—LSEG's next-generation data and analytics workflow solution—with Microsoft applications, including Teams and Microsoft 365, the introduction of innovative new cloud-based analytics and modelling services, and the consolidation of LSEG datasets into a single, cloud-based platform.

The partnership involves the migration of key LSEG technology infrastructure and data into Microsoft's Azure cloud environment, and the acquisition by Microsoft of a 4% stake in LSEG.

The IP team led the full scope of the strategic initiatives work on this matter, including detailed commercial and operational aspects. Notably, Freshfields’ work included the creation of a complex IP ownership and licensing regime, designed to enable LSEG and Microsoft to collaborate on new innovations and leverage their respective existing products and tools through a bespoke agile development methodology, while appropriately preserving and protecting their trade secrets and other proprietary assets and developments.

DLA Piper advised LSEG on infrastructure matters related to the strategic partnership. Reed Smith, CMS and Norton Rose Fulbright advised Microsoft.

• Freshfields advised Mars, the multinational manufacturer of confectionery, on its £534 million ($716 million) acquisition in January 2024 of the public company Hotel Chocolat Group.

Freshfields’ IP advice was predominantly due diligence over a complex, multijurisdictional IP portfolio.

Hotel Chocolat’s branding, positioning it as a premium manufacturer of chocolate, is central to its value. Freshfields advised Mars on key diligence issues related to branding, including scope of IP protection, IP ownership, protection/transfer of know-how and trade secrets, and IP-related arrangements with third parties.

This included the design and the technology behind the appearance of the first-generation model of a key Hotel Chocolat product, the plans to develop the second generation product, and an international licence for a third party to operate Hotel Chocolat’s business in Japan.

Giles Pratt (partner, London), Zofia Aszendorf (senior associate, London), Jake Allingan (associate, London) and Vanessa Jiang (associate, London).

Herbert Smith Freehills advised the Target Group.

Clients:

London Stock Exchange Group, Mars, Aston Martin Lagonda.