ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
GA-Alliance Corso Europa, 12 20122 Milano Italy Tel: +39 023 030 9330 Email: gcasucci@grimaldialliance.com Web: www.ga-alliance.eu/en
1. Legal Framework 1.1 Sources of Legal Protection for Trade Secrets In Italy, the protection of trade secrets is governed by statutory law, which has been harmonised at the European level and further shaped by case law interpreting these statutes. Primarily, the protection of trade secrets in Italy falls under the remit of the Industrial Property Code (Legislative Decree No 30 of 10 February 2005, referred to as the CPI), reflecting its alignment with European law, specifically Directive (EU) 2016/943. This directive aimed to standardise trade secret regulations across EU member states, in accordance with the mandatory implementation of Article 39 of the TRIPS Agreement, and was incor - porated into the CPI through Legislative Decree No 63/2018. This legal framework is further complement - ed by provisions within the Civil Code and the Criminal Code. The CPI provides protection from the unauthorised acquisition, use or disclosure of trade secrets (Articles 98 and 99). It also establishes rules concerning the confidentiality of trade secrets during civil legal pro - ceedings (Article 121-ter) and specifies civil remedies for the misappropriation of trade secrets (Article 124, paragraphs 6-bis, 6-ter and 6-quater). These provi - sions are supplemented by Articles 2598, 2599 and 2600 of the Italian Civil Code, which govern unfair competition, including the misappropriation of trade secrets with a particular focus on competition issues. In situations where confidential information is mis - appropriated but does not qualify for protection as a trade secret, the only legal recourse may be under
unfair competition law. Consequently, this would exclude the jurisdiction of specialised IP courts and the typical IP remedies, such as the gathering of evi - dence and seizure, as well as specific criteria for dam - ages compensation. Moreover, unauthorised disclosures that violate con - fidentiality agreements and industrial espionage are punishable under Articles 621, 622 and 623 of the Italian Criminal Code. This adopts a punitive approach that can operate independently or in conjunction with civil proceedings. In Italy, the enforcement of trade secret rights can be pursued in both civil and criminal courts, as they serve distinct yet complementary purposes. Civil proceedings primarily aim to provide compen - sation to the trade secret holder for incurred dam - ages, and to prevent any further unauthorised activ - ity through various measures, including injunctions, seizure or the destruction of relevant materials. While there is no local variation, conflicts may arise (as seen above) when deciding whether to pursue remedies under the CPI, Civil Code or both. Criminal proceedings, by contrast, are intended for the punishment of particularly serious behaviour, such as the deliberate disclosure of industrial or scientific secrets (Article 623 of the Criminal Code) or the viola - tion of professional confidentiality (Article 622 of the Criminal Code), with penalties ranging from fines to imprisonment. While the civil and penal jurisdictions are separate and operate concurrently, their decisions can sometimes
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