ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
5. Trade Secrets 5.1 Legal Framework and Protectable Information
For trade dress-like claims, protection is pursued through the right actually relied on, such as design, trade mark, copyright or unfair competition. The appli- cable infringement test therefore depends on the legal basis invoked. Remedies include: • interim and final injunctions; • seizure; • description orders; • withdrawal from the market; • destruction or assignment of infringing products; • damages; • recovery of profits; and • publication of the decision. Border measures may also be available against goods suspected of infringing design rights. In addition, dis- putes concerning design imitation may in some cases be assessed by the ADI Design Jury under its self- regulatory rules. 4.5 Functionality and Technical Features Design protection does not extend to features of appearance dictated solely by technical function. Courts assess whether the need to achieve a techni- cal result was the only factor determining the feature. The existence of alternative shapes may be relevant, but it is not by itself decisive; the assessment consid- ers the objective circumstances of the design and the designer’s freedom. Features that must be reproduced in their exact form and dimensions to allow a product to be mechanically connected to or placed in, around or against another product are also excluded, subject to the specific exceptions for modular systems. Partial designs and components of complex prod- ucts may be protected if they meet the requirements of novelty and individual character and, for compo- nents, remain visible during normal use where visibility is required. A design may be refused or invalidated where the protected features fall within the technical function or interconnection exclusions.
Trade secret protection is governed primarily by Articles 98 and 99 of the IP Code, as amended to implement Directive (EU) 2016/943. The framework is complemented by unfair competition rules in Articles 2598–2600 of the Civil Code and by criminal provi- sions concerning unlawful disclosure of confidential information and industrial or scientific secrets. Protectable information may include: • technical information; • formulas; • processes;
• designs; • software; • algorithms;
• business plans; • customer lists; • pricing strategies; • research data; • manufacturing methods; and • operational know-how.
To qualify as a trade secret, the information must: • be secret, in the sense that it is not generally known or readily accessible to persons in the rel- evant sector; • have commercial value because it is secret; and • be subject to reasonable measures to keep it con- fidential. Information that does not fully satisfy these require- ments may still receive protection under contract or unfair competition law, depending on the circum- stances. 5.2 Reasonable Measures and Confidentiality To maintain trade secret protection, the owner must adopt measures reasonably adequate to preserve secrecy, assessed in light of the nature of the infor- mation and the business context. These measures may include:
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