ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
from the day on which the tort occurred. This means that an IP right holder generally has a period of five years from the date on which they became aware (or should have become aware) of the infringement to initiate legal proceedings aiming to claim damages. In fact, if it is estab- lished during the ordinary proceeding that the infringement period is longer than five years, the entitlement of the patentee is limited to the last five years. 2.10 Mechanisms to Obtain Evidence and Information Italy is the leading jurisdiction in the practice of obtaining relevant information and evidence from the other parties or from third parties, both before and after lawsuits have begun. The legal system provides several tools to facili- tate the discovery of evidence before the lawsuit, by asking the court to grant an ex parte search order ( Descrizione ). Such order, which has been regulated in Italy for more than 50 years, is similar to the French Saisie-description but much more powerful and effective. The search order is usually grated 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): as confirmed in the Advocate General’s opinion in CJEU Case C-175/06. As far as this measure is concerned, Italian law authorises the search of not only technical, but also accounting documentation (commercial
invoices and orders within the limits of confi- dentiality) in order to acquire evidence regard- ing the actual scope of the infringement, with the identification of suppliers, distributors, points of sale, etc. Given that such measures, like other precau- tionary measures, have the function of ensuring immediate protection, they can also be request- ed in the absence of full and absolute evidence: what is important is to be in possession – in addition to proof of the existence of the right of the holder of the infringed right – of objective and reasonable evidence of the infringement of such right and the risk of suffering serious and irreparable damage. Following the same proce- dure, it is also possible to request the seizure of counterfeit goods, for example. Like the seizure, the search order provides for the necessary establishment of the judgment on the merits: it will be necessary, subsequently, to commence ordinary proceedings on the merits within the mandatory deadline of 31 calendar days in order to ascertain in greater detail the existence and extent of the infringement and to claim compensation for the damages suffered. If this deadline is not met, the evidence collected cannot be used in court. After the formal proceeding have begun, if the party has provided serious indications that its claims are well founded and has identified docu- ments, elements or information held by the other party that confirm these indications, it may ask that the court order their production or request the information from the other party. It may also request that the court order the other party to provide elements for the identification of the per- sons involved in the production and distribution of the infringing goods or services.
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