ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
and Italy, and this connection can be established through: • the defendant’s activities in Italy, such as con - ducting business, selling goods, or otherwise interacting with the Italian market; • the harm caused in Italy, for instance, if the trade secret misuse negatively impacts an Italian business or causes damage to Italian assets or reputation; and/or • agreements with jurisdiction clauses (if there is a contractual agreement that designates Italian courts as having jurisdiction over dis - putes related to trade secret protection, this can also create a basis for pursuing a claim in Italy). Even if a claim is brought before an Italian court, the court must determine which country’s laws apply, analysing the conflict of laws rules. As a member of the EU, Italy follows the EU Trade Secrets Directive (Directive (EU) 2016/943), which harmonises trade secret protection across member states. However, if misappropriation occurs outside the EU, Italian courts may apply Italian law if the harm is significant in Italy or if the parties have strong ties to Italy, or they may apply the laws of the country where the misap - propriation took place.
• unlawful access to the trade secret, which does not necessarily require actual use, but simply unauthorised access. Therefore, a trade secret owner does not need to prove the actual use of the trade secret by the defendant, but must establish that the defend- ant gained access to the trade secret without permission. The absence of permission implies that the trade secret holder has to prove that the defendant gained access against their will through unlawful means, such as breach of con - tract, espionage or theft. In the CPI, there is a prohibition against the acquisition, disclosure to third parties, or misuse of trade secrets, unless they have been indepen - dently obtained. Furthermore, the CPI states that the use or disclosure of a trade secret is also considered unlawful if a person knew or, under the circumstances, should have known that the trade secret had been obtained directly or indi - rectly from a third party who used or disclosed it unlawfully. 2.2 Employee Relationships In Italy, the elements of a trade secret misap - propriation claim remain consistent, regardless of whether the alleged misappropriation involved an employee or another party. Employees are bound by a duty of loyalty under Article 2105 of the Italian Civil Code, which pro - hibits them from disclosing or misusing their employer’s confidential information during their employment. Breach of this duty occurs when an employee steals trade secrets or uses them for personal gain, independently of whether the trade secret is publicly disclosed or simply misused inter - nally. Italian courts recognise that employees,
2. Misappropriation of Trade Secrets
2.1 The Definition of Misappropriation In Italy, the requisite elements for a claim of trade secret misappropriation are: • the existence of a trade secret, defined by its confidentiality, economic value, and the owner’s efforts to protect it; and
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