ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
• the evidence and documents they intend to rely upon. For trade secrets, in contrast to other registered IP rights, it is essential to: • clearly describe the nature and content of the trade secrets; • file a confidential version of the relevant documents with the court; and • provide evidence of both the secret nature of the information and the reasonable measures taken to protect it. Statements based merely on “information and belief” are generally only admissible to support a preliminary Descrizione request and are insuf - ficient for proving misappropriation in full pro - ceedings. 5.6 Seizure Mechanisms Italian jurisdiction provides a specific IP mecha - nism for gathering evidence ex parte, including the seizure of samples of products incorporating allegedly misused trade secrets. The corresponding order, known as Descrizione , aligns with Articles 6 and 7 of the EU Enforce - ment Directive. An ex parte search order is granted only when there is clear, pre-existing evidence of: • the validity and enforceability of the trade secret; • the infringement; and • the risk of serious and irreparable harm due to continued unlawful conduct. If this standard is not met, courts typically deny ex parte seizure and will instead rule on the mat - ter through an inter partes hearing.
The Descrizione is conducted by a bailiff, often accompanied by a court-appointed technical expert using forensic tools. If authorised, the claimant’s lawyer and expert may also attend. Due to the high risks associated with inter partes proceedings (which may compromise the entire legal strategy), it is recommended to first seek evidence through a Descrizione– process that requires a lower evidentiary threshold for ex par - te approval (see 5.7 Obtaining Information and Evidence ). Once this evidence is obtained and the order is enforced and validated, the claimant may then consider requesting seizure and pre - liminary injunctions or initiating merit proceed - ings. 5.7 Obtaining Information and Evidence Italy is the leading jurisdiction in the practice of obtaining relevant information and evidence from the other parties or from third parties, both before and after lawsuits have begun. The legal system provides several tools to facili - tate the discovery of evidence before the lawsuit, by asking the court to grant an ex parte search order ( Descrizione ). Such an order, which has been regulated in Italy for more than 50 years, is similar to the French Saisie-description but much more powerful and effective. The search order is usually granted ex parte. Only in very exceptional cases does the judge require an inter partes hearing. In addition, the Italian courts were the first to grant ex parte cross-border search orders within the EU via the Council Regulation (EC) No 1206/2001 (now updated as Regulation (EU) 2020/1783).
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