ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
7.2 Measures of Damages Compensation for damages in trade secret cases is typically based on the right-holder’s loss of profits. This may be calculated by evaluating the claimant’s reduction in turnover as a result of the misappro - priation – though this connection can be difficult to establish – or by calculating the royalties the infringer would have paid for a legitimate licence, which may be doubled or tripled, depending on the circumstanc - es. Alternatively, or additionally, the right-holder may claim actual lost profits due to market presence of the infringing products. The claimant may also request the return of profits gained by the infringer, awarded either in addition or as an alternative to lost profits, but only for the portion exceeding the damages awarded. Italian law does not recognise “punitive damages” per se. However, judges retain discretionary powers to ensure that remedies are proportionate to the seri - ousness of the infringement and the interests of third parties. In this regard, please note that Article 124.6- ter and 6-quater of the Italian IP Code, as amended by Legislative Decree 63/2018, states that in proceedings relating to the unlawful acquisition, use or disclosure of trade secrets the judge may order, at the request of the interested party, the payment of compensation, if the following conditions are met: • at the time of use or disclosure, the applicant was not aware nor, under the circumstances, should have been aware that the trade secrets had been obtained from a third party who was unlawfully using or disclosing them; • the implementation of such measures may be excessively burdensome; and • compensation is appropriate in relation to the dam - age suffered by the party requesting the applica - tion of the measures. The compensation paid pursuant to paragraph 6-ter may not, in any case, exceed the amount of the fees due if the party had requested authorisation to use the trade secrets for the period of time for which their use could have been prohibited. It should also be noted that this compensation cannot be combined with compensation for damages.
7.3 Permanent Injunction The merit judgment assessing the infringement usu - ally includes remedies such as permanent injunctions, market recalls, astreinte (ie, a recurring monetary pen - alty for non-compliance), assignment or, alternatively, destruction of the infringing goods by the respondent itself. As a general rule, it is not possible to obtain an order that limits an employee’s subsequent employment unless the trial has ascertained the infringement of the trade secret and know-how by the ex-employee. In such cases, astreinte may serve as an effective deter - rent by imposing recurring financial penalties for each breach or delay in complying with the court order. There are no fixed limitations on the duration of a permanent injunction, which will typically remain in force until the protected information enters the public domain – provided this occurs through lawful means rather than as a result of any wrongful act. 7.4 Attorney’s Fees Winning parties, including defendants, have the right to recover legal costs and attorneys’ fees, as deter - mined by the judge based on rates outlined in specific legislation. Normally, the award of legal fees is auto - matically made by the judge when issuing the final decision, taking into consideration the estimate made by the winning party in the final pleadings, along with supporting evidence provided by this party related to the legal and technical costs incurred during the liti - gation. 7.5 Costs In addition to attorneys’ fees, winning parties, includ - ing defendants, can recover the costs related to the court expert stage – ie, the costs anticipated for the court expert and costs incurred for the party-appoint - ed expert. In rare cases, so-called reaction costs (such as inves - tigations, preventative expert analysis, purchases of allegedly counterfeited items, requests for forensic and technical opinions, draft of warning letters) can be awarded with the final judgment as part of the dam - ages (so-called actual loss).
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