ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
safety and AI rules. Secondary liability is not auto- matic and is assessed on a case-by-case basis.
protection requires secrecy and reasonable confiden- tiality measures. Overlapping protection cannot be used to bypass exclusions. Functional or technically necessary fea- tures cannot be monopolised through design or trade mark law merely by invoking another label. Courts therefore assess each right separately while ensuring that cumulative enforcement does not lead to unjusti- fied overprotection or distort competition. 8.3 Patents and Trade Secrets Confidential know-how and technical information may be protected as trade secrets before, during and after a patent application, provided that the informa- tion remains secret, commercially valuable because of its secrecy and subject to reasonable confidentiality measures. Filing a patent application does not immediately destroy secrecy for information that remains unpub- lished. However, once the application is published, the disclosed technical information enters the public domain and can no longer be protected as a trade secret. For this reason, applicants often decide care- fully what to disclose in the patent and what to retain as confidential know-how. Trade secret protection may survive patent expiry or invalidation only for information not disclosed in the patent or otherwise made public. Ancillary know- how, manufacturing tolerances, process parameters, data or improvements kept confidential may therefore remain protected independently of the patent. If a third party later patents similar subject matter, a prior user may in some cases rely on prior use rights within the limits set by law. 8.4 Trade Marks, Trade Dress and Industrial Designs Trade marks protect signs that distinguish the com- mercial origin of goods or services. Industrial designs protect the appearance of a product, such as shape, lines, contours, colours, texture, materials or orna- mentation, provided that the design is new and has individual character.
8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations The choice of protection depends on the subject mat- ter, the business objective and how the asset will be exploited. Patents are preferable where the invention can be reverse-engineered, where strong exclusive rights are needed, or where protection is important for invest- ment, licensing or enforcement. The disadvantages are cost, time, disclosure and a limited term. Trade secrets are preferable where the information can realistically be kept confidential, where the value lies in know-how or processes not visible from the marketed product, or where indefinite protection is commercial- ly important. The disadvantages are vulnerability to independent discovery, lawful reverse engineering and accidental disclosure. Other regimes may be more suitable for other aspects of the same product: trade marks for branding, designs for appearance, copyright for creative expression, and unfair competition for misleading or parasitic conduct. In practice, businesses often combine several layers of protection. 8.2 Cumulative and Overlapping Protection Italian law permits cumulative protection where the same subject matter satisfies the requirements of more than one IP regime. A product shape, for exam- ple, may be protected as a design, as a three-dimen- sional trade mark and, in appropriate cases, by copy- right or unfair competition. Each right is assessed independently. The fact that one form of protection exists does not automatically establish another. A design must be new and have individual character; a trade mark must function as an indicator of origin and not fall within absolute exclu- sions; copyright requires originality; and trade secret
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