ITALY Trends and Developments Contributed by: Giovanni F Casucci, GA-Alliance
• that 90% of Italian IP and trade secrets litigation is instituted or otherwise handled via an interlocutory proceeding; • approximately half of the cases instituted via interlocutory proceedings are settled as a result of decisions rendered at this preliminary stage; • the average time for trade secrets and patent litiga - tion in the interlocutory phase does not exceed 18 months (safe extraordinary situations), while in trade mark and design matters it is within six months; and • the average time of ordinary litigation (about 40 months) should be assessed as a whole, consider - ing that in such litigation the determination of the violation as well as the determination of damages is assessed (which in other jurisdictions requires a separate trial). In the light of this data, one can be reasonably con - vinced that Italy is among the top countries in terms of speed in the interlocutory stages, and among the average countries in terms of the duration of the entire trial, including the stage envisaged for dam - ages. Therefore, the Italian system is very aware of the economic and time interest of the parties involved in trade secrets and IP litigation, offering time-effective solutions to intervene in any case of conflict. From this point of view, one of the first reasonable options for a trade secrets and IP holder should be to take legal action in Italy (at least for evidence-gather - ing measures, as illustrated below), and to then con - sider how to also extend the litigation to other territo - ries or to involve other foreign entities in the pending Italian litigation. The Cross-Border Perspective of the Italian Jurisdiction Trade secrets violations fall within the general catego - ry of unfair competition and tort law. This concerns an unregistered right, with no territorial limits, internation - ally defined by the Trips Agreement (Article 39) and regulated by the self-executive parts of the EU Trade Secrets Directive. Accordingly, any court within the EU and part of the Lugano Convention may have the right to decide, with
a cross-border effect. Italy may play a strategic role in this regard, due to the following issues. The application of the co-defendant rules Italian jurisprudence consciously and intelligently applies the principle established within Article 8.1 of Regulation 1215/12 on the subject of civil and com - mercial litigation. In an important decision regarding registered designs, in 2018 the Court of Milan con - firmed the opportunity to involve several companies linked by corporate relationships in a single litigation to determine both injunctions and damages – in this respect anticipating (by five years) the decision of the CJEU in 2023 (C-832/21). This approach thus makes it possible to envisage a single attack on multiple entities residing in numerous European jurisdictions, avoiding replicating litigation in each jurisdiction. Evidence-gathering measures In the author’s opinion, the Italian descrizione order was the inspiration for the drafting of Articles 6 and 7 of the Enforcement Directive. The Italian order, unlike the French system, in fact allows for the collection of any type of evidence, even of an economic nature, in relation to the facts inherent to a suspected infringe - ment, and also allows for the participation of the interested party in access operations. In addition, the Italian system allows for a clear balancing of interests between the collection of evidence and the protection of the confidential information of the party accused of trade Secrets and IP infringement, with the typical issuance of “protective orders”. Concerning trade secrets proceedings in particular, it is worth mentioning the relevant role of the court expert and their forensic team in the so-called “mas - sive acquisition” of data to be analysed and filtered at the second stage. Usually, such measures (if well and carefully executed) are already resolutory for any conflict. Italy’s strong tradition in this regard has enabled the use of the tool provided by Regulation 1206/2001 (currently replaced by Regulation 1783/20), accord - ing to which any EU judge may order the gathering of evidence in other jurisdictions. The United Kingdom’s refusal to comply with the order of the Court of Genoa in 2005 ( Tedesco v RWO ) brought to the CJEU’s atten -
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