ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
date they became aware – or should have become aware – of the infringement to commence legal pro - ceedings to claim damages. 5.3 Initiating a Lawsuit A trade secret owner can initiate either urgent pro - ceedings or merit proceedings by: • filing a motion before the court for a search order, preliminary injunction and/or seizure; or • serving the defendant with a writ of summons. When possible (ie, when there are reasonable sus - picions of misappropriation), the claimant is advised to first request a preliminary search order (known as descrizione ). This is typically granted ex parte and is executed by a bailiff and court-appointed technical expert at the premises of the respondent or relevant third parties in order to collect further evidence of the misappropriation. 5.4 Jurisdiction of the Courts In Italy, unlike in most EU member states, trade secret enforcement falls under the jurisdiction of specialised IP courts ( Sezioni Imprese ), which are sections of the ordinary civil courts. They are established mainly in the main courts located in the capital of each region, with the exception of Lombardy, Trentino-Alto Adige and Sicily (where there are two branches) and Valle D’Aosta (where there are no branches, as jurisdiction lies in Turin). In total, there are 22 courts with jurisdic - tion over IP matters in the first instance. If one of the parties is a foreign entity, territorial juris - diction is restricted to 11 specialised courts: Bari, Bolzano, Cagliari, Catania, Genoa, Milan, Naples, Rome, Trento, Turin and Venice. This applies even in the case of multiple defendants, where one or more are incorporated abroad – even if they have a branch with permanent representation in Italy. The appropriate court can be chosen based either on the place of residence/domicile abode of the defend - ant (forum rei) or on the place where the infringing activity took place (forum commissi delicti). Appeals from decisions of the specialised sections of the business courts of first instance are heard by
the Courts of Appeal ( Corte d’Appello ). The Courts of Appeal also have specialised sections for IP matters and sit in the capital of each region, with the excep - tions indicated above. The third and final instance for IP matters is typically the Supreme Court of Cassation ( Corte di Cassazione ). 5.5 Initial Pleading Standards In the initial pleading, the claimant must set out clearly, specifically and concisely: • the factual and legal grounds for the claim; and • the evidence and documents they intend to rely upon. For trade secrets, in contrast to other registered IP rights, it is essential to: • clearly describe the nature and content of the trade secrets; • file a confidential version of the relevant documents with the court; and • provide evidence of both the secret nature of the information and the reasonable measures taken to protect it. Statements based merely on “information and belief” are generally only admissible to support a preliminary descrizione request and are insufficient for proving misappropriation in full proceedings. 5.6 Seizure Mechanisms Italian jurisdiction provides a specific IP mechanism for gathering evidence ex parte, including the seizure of samples of products incorporating allegedly mis - used trade secrets. The corresponding order, known as descrizione , aligns with Articles 6 and 7 of the EU Enforcement Directive. An ex parte search order is granted only when there is clear, pre-existing evidence of: • the validity and enforceability of the trade secret; • the infringement; and • the risk of serious and irreparable harm due to continued unlawful conduct.
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