ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
1. Legal Framework 1.1 Sources of Legal Protection for Trade Secrets In Italy, the protection of trade secrets is gov - erned by statutory law, which has been harmo - nised at the European level, and further shaped by case law interpreting these statutes. Primar - ily, 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 imple - mentation of Article 39 of the TRIPS agreement, and was incorporated into the CPI through Leg - islative Decree No 63/2018. This legal framework is further complemented by provisions within the Civil Code and the Criminal Code. The CPI provides protection from the unau - thorised acquisition, use or disclosure of trade secrets (Articles 98 and 99). It also establishes rules concerning the confidentiality of trade secrets during civil legal proceedings (Article 121-ter) and specifies civil remedies for the misappropriation of trade secrets (Article 124, paragraphs 6-bis, 6-ter, 6-quater). These provi - sions are supplemented by Articles 2598, 2599, and 2600 of the Italian Civil Code, which govern unfair competition, including the misappropria - tion of trade secrets with a particular focus on competition issues. In situations where confidential information is misappropriated but does not qualify for protec - tion 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 evidence and seizure, as well as specific criteria for damages compensation. Moreover, unauthorised disclosures that violate confidentiality agreements and industrial espio - nage are punishable under Articles 621, 622 and 623 of the Italian Criminal Code. This adopts a punitive approach that can operate indepen - dently 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 pur - poses. Civil proceedings primarily aim to pro - vide compensation to the trade secret holder for incurred damages and to prevent any further unauthorised activity 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 intend - ed 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 violation of professional confidentiality (Article 622 of the Criminal Code), with penalties ranging from fines to imprison - ment. While the civil and penal jurisdictions are sepa - rate and operate concurrently, their decisions can sometimes be at odds with each other as they apply different standards of evidence and different criteria.
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