ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
If this standard is not met, courts typically deny ex parte seizure and will instead rule on the matter through an inter partes hearing. The descrizione is conducted by a bailiff, often accom - panied by a court-appointed technical expert using forensic tools. If authorised, the claimant’s lawyer and expert may also attend. Owing to the high risks associated with inter partes proceedings (which may compromise the entire legal strategy), it is recommended to first seek evidence through a descrizione process that requires a lower evidentiary threshold for ex parte approval (see 5.7 Obtaining Information and Evidence ). Once this evidence is obtained and the order is enforced and validated, the claimant may then consider requesting seizure and preliminary injunctions or initiating merit proceedings. 5.7 Obtaining Information and Evidence Italy is a leading jurisdiction in the practice of obtain - ing relevant information and evidence from the other parties or from third parties, both before and after lawsuits have begun. The legal system provides sev - eral tools to facilitate the discovery of evidence before the lawsuit, by asking the court to grant an ex parte search order ( descrizione ). Such an order, which has been regulated in Italy for more than 50 years, is simi - lar to the French Saisie-description but is much more powerful and effective. The search order is usually granted ex parte. Only in very exceptional cases does the judge require an inter partes hearing. In addition, the Italian courts were the first to grant ex parte cross-border search orders within the EU via Council Regulation (EC) No 1206/2001 (now updated as Regulation (EU) 2020/1783). Italian law authorises the search of not only techni - cal but also accounting documentation (commercial invoices and orders within the limits of confidential - ity) in order to acquire evidence regarding the actual scope of the infringement, with the identification of suppliers, distributors, points of sale, etc.
For the granting of an ex parte search order, apart from providing evidence of the validity and enforce - ability of trade secrets, it is sufficient to provide the court with reasonable evidence of the possible misap - propriation. The effectiveness and exploitability of the results and evidence gathered during the search order execution are subject to the commencement of the proceedings on the merits within the mandatory deadline of 31 cal - endar days from the confirmation of the search order. During the proceeding, if the claimant has provided serious indications that its claims are well founded and has identified documents, elements or informa - tion held by the other party that confirm these indica - tions, it may request that the court order their produc - tion or request the information from the other party. Furthermore, the claimant may request that the court compel the opposing party to disclose identifying information regarding the indviduals involved in the production and distribution of the infringing goods or services. The judicial authorities in both urgent and merit pro - ceedings may also order, upon a justified and propor - tionate request by the applicant, that information be provided on the origin and distribution networks of the goods or services infringing a right; this informa - tion is obtained by questioning the infringing parties or third parties. 5.8 Maintaining Secrecy While Litigating Pursuant to Article 9 of the EU Trade Secrets Directive, the Italian CPI (Article 121-ter) provides that courts may prohibit the use or disclosure of trade secrets contained in legal proceedings to any individual who, in any capacity, has access to the case file. This prohi - bition may be requested by a party and remains effec - tive even after the conclusion of the proceedings. In particular, the judge, at the request of a party, may adopt the measures most suitable to protect the con - fidentiality of the trade secrets in question, such as: • limiting access to the hearings and to the acts and documents in the official file to a restricted number of subjects; and
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