ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
preliminary injunction and/or seizure of the infringing goods, astreinte, market recalls, etc. As to the main proceedings, the standard timeline, involving revocation and infringement issues, is typi - cally around three years on average. The recent reform of the CPC introduced a series of simplifications in terms of timings and the number of hearings to be held. Trade secret matters now usually involve four trial hearings: • the first hearing; • the appointment of the court technical expert; • a discussion of the results of the court technical expert’s findings; and • a final hearing. Trade secret misappropriation is usually proved through serious evidence. While fact witnesses are not frequently used, they may be called upon to sup - port specific elements, such as the reasonable meas - ures adopted by the trade secret holder to protect the information. 6.3 Use of Expert Witnesses Although Italian procedure does not formally provide for expert witnesses, party-appointed experts actively participate in the court technical expert stage. Only the judge can examine the witnesses and the court technical expert, although this can be prompted by specific requests from the parties’ legal representa - tives. 7. Remedies 7.1 Preliminary Injunctive Relief The requirements for granting interim injunctions are as follows. • Likelihood of success on the merits (fumus boni iuris): the party seeking the interim injunction must typically demonstrate a prima facie case, indicat - ing a likelihood of success on the merits of the trade secret misappropriation claim. This involves showing that there is a valid and enforceable trade secret, a likelihood of misappropriation and a basis for legal action.
• Urgency (periculum in mora): interim injunctions are granted when there is an urgent need to prevent irreparable harm to the rights-holder. The appre - ciation of the urgency is much more flexible than in other European jurisdictions (ie, several months from the infringement’s knowledge). Pursuant to Article 11.3 (a) of the Trade Secrets Direc - tive, as well as Article 132.4, any preliminary injunction granted must be followed by the initiation of proceed - ings on the merits within 31 calendar days. In this regard, it should be noted that the new Article 132, paragraph 5-quater of the Italian IP Code, in imple - mentation of Article 11, paragraph 5 of Directive (EU) 943/201628 (again through Article 8 of Legislative Decree No 63/2018), specifies liability for damages on the part of the person who obtained the precau - tionary measure but then (in addition to other cases) fails to initiate timely proceedings on the merits: in particular, if the precautionary measures adopted to protect trade secrets become ineffective due to failure to initiate proceedings on the merits within the time limit referred to above (or lose their effectiveness due to an action or omission by the applicant), or if it is subsequently established that the acquisition, use or disclosure of the aforementioned trade secrets did not occur and were requested by abusing one’s right, the applicant shall be required to compensate for the damage caused by the measures adopted. If the court orders a preliminary injunction, it is not compulsory for the claimant to post a bond. None - theless, this is advisable when the volume and/or the nature of the information is particularly extensive and sensitive, since it demonstrates the seriousness of the legal action. The amount of the bond depends on the volume and value of the information at issue, although there is no statutory minimum or maximum. On the other hand, with regard to bonds it should also be noted that, according to Article 132 as amended by Legislative Decree 63/2018, the judge may, at the request of a party and as an alternative to the appli - cation of precautionary measures, authorise the party concerned to continue to use trade secrets by provid - ing adequate security for any compensation for dam - ages suffered by the legitimate holder.
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