ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
media containing such information have been returned, destroyed, or permanently deleted).
the Italian Civil Code, it must be demonstrated that the conduct was pursued with the specific intent to harm the competing business – ie, with awareness and animus nocendi – and that the harm caused exceeds the ordinary prejudice resulting from an employee’s voluntary deci - sion to change employers. In essence, the con - duct must be aimed at depriving the competing entrepreneur of the return on their investment in human resources. Relevant rules and case laws do not list specific best practices and/or approaches to be used before the individual is hired/during the onboard - ing process. Nonetheless, a few protective actions may be taken by the employer (eg, writ - ten statements that the employee’s knowledge does not violate the rights of third parties). 5. Trade Secret Litigation 5.1 Prerequisites to Filing a Lawsuit There are no strict prerequisites for filing a law - suit in intellectual property matters, including trade secret cases. In particular, there is no need to send a warning letter. In fact, such an initiative may undermine the element of surprise necessary for ex parte orders and may prompt the recipient to initiate a declaratory action for non-infringement. Before filing a lawsuit, it is highly recommended to verify that all the conditions for trade secret protection are met – especially the existence of reasonable protective measures at the time of the alleged misappropriation. It is also advisable to acquire formal, and, where possible, third par - ty-certified, evidence of the misappropriation.
4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise Italian courts generally draw a clear line between an employee’s general knowledge and skills, and legally protectable trade secrets. Accordingly, it falls to the employer to explicitly identify the content of the trade secrets in order to distinguish them from the employee’s gen - eral expertise, and to make these boundaries enforceable after the employment relationship has ended. As a general rule, Italian jurisdiction does not recognise the doctrine of “inevitable disclosure” , even though Article 2125 of the Italian Civil Code provides a possible non-compete clause in the employment agreement subject to certain condi - tions regarding scope, duration (not exceeding five years for managers and three years for other employees), geographic limits, and the require - ment of fair compensation for the employee. 4.2 New Employees Generally speaking, an entrepreneur seeking to hire one or more employees from a competing business is considered a legitimate exercise of economic initiative, protected under Article 41 of the Italian Constitution, as well as an expression of the free movement of labour under Article 4 of the same Constitution. Accordingly, in order for the act of recruiting col - laborators or employees to amount to an act of unfair competition under Article 2598, No 3 of
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