ITALY Trends and Developments Contributed by: Giovanni F Casucci, EY Tax & Law
other territories or to involve other foreign entity in the pending Italian litigation. Examples of Enforcement Excellence Below are specific examples of typical proce- dural tools in litigation before Italian IP courts that represent an excellent application of the rules established by Directive 2004/48/EC (the “Enforcement Directive” or IPRED) since 2004 in full consistency with Regulation (EU) No 1215/12 on civil and commercial litigation. The application of the co-defendant rules Italian jurisprudence intelligently and conscious- ly applies the principle established within Article 8.1 of Regulation (EU) No 1215/12 on civil and commercial litigation. In an important decision about registered design in 2018, the Court of Milan confirmed the opportunity to involve sev- eral companies linked by corporate relationships in a single litigation to determine both injunc- tions and the determination of damages, there- by 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 multiple European jurisdictions, avoiding replicating litigation in each jurisdiction. Evidence-gathering measures The Italian Descrizione order, in the author’s opin- ion, was the inspiration for the drafting of Articles 6 and 7 of the Enforcement Directive. The Ital- ian order, unlike the French system, allows the collection of any type of evidence, even of an economic nature, in relation to the facts inher- ent to a suspected infringement, also allowing the participation of the interested party in the access operations. In addition, the Italian system allows a clear balancing of interests between the collection of evidence and the protection of the confidential information of the party accused of
patent infringement, with the typical issuance of “protective orders”. Italy’s strong tradition in this practice has enabled the use of the tool provided by Regulation (EC) No 1206/2001, according to which any EU judge may order the gathering of evidence in other jurisdictions. The refusal of the United Kingdom to comply with the order of the Court of Genoa in 2005 (Tedesco v RWO) brought to the attention of the CJEU (C-175/06) the analysis of compatibility between the Italian Descrizione and the purposes of this Regulation, confirming (indirectly) its full consistency. Since then, Italian specialised courts have granted cross-border evidence-gathering measures without difficulty in order to concentrate the determination of the tort and damage in a single dispute. Asset-preservation measures On the other hand, with regard to the application of Article 9.2 IPRED, recently the most atten- tive Italian courts have issued ex parte meas- ures aimed at securing the economic values of the future judgment on the merits, thus granting very effective and significant measures (amount- ing to hundreds of thousands of euro) on sei- zures of bank accounts and assets of the alleged infringer. The determination of damages As far as the determination of damages is con- cerned, Italian judges are open to meaningfully apply all the criteria provided for in Article 13 of the Enforcement Directive, also verifying their consistency in relation to different national interpretations that are brought to the judge’s attention (as in the case where the criteria for determining damages of a country other than Italy, with respect to the legal seat of the subject called upon to sue, is applied).
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