ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
5.2 Limitations Period Under Italian law, there is no statute of limitations for bringing a claim for trade secret misappro - priation. However, the right to claim damages arising from a tort (which includes trade secret misap - propriation) is subject to a five-year limitation period, starting from the date on which the tort occurred. This generally means that the IP right holder has five years from the date they became aware – or should have become aware – of the infringement to commence legal proceedings to claim damages. 5.3 Initiating a Lawsuit A trade secret owner can initiate either urgent proceedings or merit proceedings by: • filing a motion before the court for a search order and/or preliminary injunction and/or seizure; or • serving the defendant with a writ of sum - mons. When possible (ie, when there are reasonable suspicions of misappropriation), the claimant is advised to first request a preliminary search order (known as descrizione ). This is typically granted ex parte and is executed by a bailiff and court-appointed technical expert at the prem - ises of the respondent or relevant third parties in order to collect further evidence of the misap - propriation. 5.4 Jurisdiction of the Courts In Italy, unlike in most EU member states, trade secret enforcement falls under the jurisdiction of specialised IP courts ( Sezioni Imprese ), which are sections of the ordinary civil courts.
They are established mainly in the main courts located in the capital of each region, with the exception of Lombardy, Trentino-Alto Adige and Sicily (where there are two branches) and Valle D’Aosta (where there are no branches, as juris - diction lies in Turin). In total, there are twenty-two courts with jurisdiction over IP matters in the first instance. If one of the parties is a foreign entity, territo - rial jurisdiction is restricted to eleven special - ised courts: Bari, Bolzano, Cagliari, Catania, Genoa, Milan, Naples, Rome, Trento, Turin, and Venice. This applies even in the case of multiple defendants, where one or more are incorporated abroad – even if they have a branch with perma - nent representation in Italy. The appropriate court can be chosen based either on the place of residence/domicile abode of the defendant (forum rei) or on the place where the infringing activity took place (forum commissi delicti). Appeals from decisions of the specialised sec - tions of the business courts of first instance are heard by the courts of appeal ( Corte d’Appello ). The courts of appeal also have specialised sec - tions for intellectual property matters and sit in the capital of each region, with the exception indicated above. The third and final instance for intellectual prop - erty matters is typically the Supreme Court of Cassation ( Corte di Cassazione ). 5.5 Initial Pleading Standards In the initial pleading, the claimant must set out clearly, specifically, and concisely: • the factual and legal grounds for the claim; and
144 CHAMBERS.COM
Powered by FlippingBook