ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
• physical measures – restricted access to premises, locked archives or laboratories, visitor controls and secure storage of confidential materials; • IT measures – password protection, access con- trols on a need-to-know basis, encryption, secure file-sharing systems, logging and limits on copying or downloading data; and • legal and organisational measures – NDAs, con- fidentiality clauses in employment and commer- cial agreements, internal confidentiality policies, employee training, and obligations to return or delete confidential materials upon termination of the relationship. Disclosure to employees or third parties does not automatically destroy protection, provided that it is limited, controlled and made under confidentiality obligations. By contrast, uncontrolled disclosure, or disclosure to persons not bound by confidentiality duties, may undermine the secrecy requirement and therefore affect trade secret protection. 5.3 Misappropriation of Trade Secrets Misappropriation includes the unlawful acquisition, use or disclosure of trade secrets without the holder’s consent. Acquisition is unlawful where it results from unauthorised access, copying, appropriation or any conduct contrary to honest commercial practices. Use or disclosure is unlawful where the person knew, or should have known, that the information was obtained unlawfully or was subject to confidentiality duties. Liability may also extend to indirect recipients who use or disclose information obtained from a third party when they knew, or should have known, that the third party had acted unlawfully. In employment disputes, Article 2105 of the Civil Code imposes a duty of loyalty on employees, including duties not to disclose or misuse the employer’s con- fidential information. Similar issues arise in joint ven- tures, collaborations and competitor disputes, where the key questions are the source of the information, the scope of contractual restrictions and whether rea- sonable secrecy measures were in place. Serious conduct, including industrial espionage or unlawful disclosure of industrial or scientific secrets,
may also give rise to criminal liability pursuant to Arti- cles 621–623 of the Criminal Code. 5.4 Duration and Loss of Protection Trade secret protection has no fixed term. It lasts as long as the information continues to satisfy the statu- tory requirements, particularly secrecy and commer- cial value arising from that secrecy. Protection is lost where the information becomes generally known or readily accessible to the relevant sector. Accidental or unauthorised disclosure may therefore jeopardise protection if it results in the information entering the public domain. Authorised disclosure does not destroy protection where it is made under confidentiality restrictions and secrecy is effectively maintained. In the event of acci- dental or unauthorised disclosure, the holder should act promptly to contain the disclosure, secure or retrieve materials, enforce confidentiality obligations and, where necessary, seek urgent court measures. 5.5 Enforcement and Remedies Civil remedies include: • interim and final injunctions; • orders prohibiting use or disclosure; • seizure; • recall; • removal from the market; • destruction of infringing goods and documents; • corrective measures; and • periodic penalties for non-compliance. Damages may be calculated by reference to lost prof- its, reasonable royalties or, where appropriate, the infringer’s profits. Criminal sanctions are available in serious cases under provisions of the Criminal Code dealing with unlawful disclosure or use of confidential information and industrial or scientific secrets. Non-compliance with judicial measures may also attract sanctions. Confidentiality during litigation is protected by Article 121-ter of the IP Code. Courts may restrict access to documents, hearings and records, limit disclosure to selected individuals, and prohibit parties, lawyers,
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