ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
Compared to all other IP rights (including pat - ents, trade marks and industrial designs) which also require formal registration under Italian law to secure exclusive rights, trade secrets do not offer monopoly rights over the information itself; instead, they protect against unauthorised use or disclosure. 1.12 Overlapping IP Rights In Italy, it is possible for a claimant to assert trade secret rights alongside other forms of IP rights, provided that the claims relate to distinct aspects of the same IP or business advantage. Trade secrets, however, can sometimes overlap with patents and copyrights depending on the specifics of the case. For example, a claimant might allege both patent infringement and trade secret misappropriation when the defendant has used both the patented invention and confiden - tial know-how that was not disclosed in the pat - ent application. Similarly, in cases involving software or data - bases, trade secrets can protect undisclosed algorithms or functionality, while copyrights safeguard the expression of these ideas, such as source code or database structures. Trade secrets may also be invoked in situations where confidential marketing strategies or branding techniques have been unlawfully disclosed or exploited, particularly in the lead-up to the launch of a new brand or trade mark. 1.13 Other Legal Theories The Italian CPI already provides in Article 99 the possibility to take action against anyone who, at the time of acquisition, use, or disclosure, knew or, according to the circumstances, should have known that the trade secrets had been obtained directly or indirectly from a third party who used or disclosed them unlawfully. This can also cover the inducement to breach a confidentiality duty.
Furthermore, it is possible to bring claims relat - ing to trade secrets that do not directly rely on misappropriation but are based on other legal principles, such as breach of fiduciary duty or tortious interference: • Employees have a fiduciary duty under Article 2105 of the Civil Code to act loyally toward their employer, prohibiting the disclosure or misuse of confidential information, including trade secrets (see 2.2 Employee Relation- ships ). • Article 2596 of the Italian Civil Code permits agreements that limit competition, provided they are confined to a specific area, activity, and duration not exceeding five years, to pro - tect confidential information post-relationship. • Moreover, employers may face legal action for unfair competition if they induce disloyal employees to disclose trade secrets, as prohibited by Article 2598 of the Italian Civil Code. The trade secret owner can seek an injunction to stop unlawful use, compensation for damages, and publication of the judgment to restore their reputation. • Additionally, under Article 2043 of the Civil Code, the employer who encouraged the violation can be held liable for tortious acts if their intentional or negligent behaviour caused concrete harm to the competitor. In this context, it is crucial to prove the causal link between the wrongful conduct and the damage suffered, thereby ensuring effective protection of trade secrets and fair competi - tion in the market. • Finally, the general principles of good faith and fair dealing in the performance of con - tracts and the duty of solidarity arising from so-called social contact ( contratto sociale ) also come into play.
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