ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
5.8 Maintaining Secrecy While Litigating Pursuant to Article 9 of the EU Trade Secrets Directive, the Italian CPI (Article 121-ter) pro - vides that courts may prohibit the use or disclo - sure of trade secrets contained in legal proceed - ings to any individual who, in any capacity, has access to the case file. This prohibition may be requested by a party and remains effective even after the conclusion of the proceedings. In particular, the judge, at the request of a party, may adopt the measures most suitable to pro - tect the confidentiality of the trade secrets in question, such as: • limiting access to the hearings and to the acts and documents in the official file to a restrict - ed number of subjects; and • ordering the redaction or omission of confi - dential portions of documents. This approach closely mirrors the “confidentiality clubs” or “confidentiality rings” used in antitrust proceedings. As a general rule, civil proceedings in Italy are confidential in nature, and access to information exchanged during such proceedings is typically limited to the parties, with third-party access excluded. 5.9 Defending Against Allegations of Misappropriation In Italy, the most common and effective defence to allegations of trade secret misappropria - tion involves challenging the protectability of the trade secret itself. Typical lines of defence include: • failure to adequately identify the trade secret; • absence of reasonable measures to maintain secrecy; • lack of actual secrecy (ie, information already in the public domain); and
Italian law authorises the search of not only technical, but also accounting documentation (commercial invoices and orders within the lim - its of confidentiality) in order to acquire evidence regarding the actual scope of the infringement, with the identification of suppliers, distributors, points of sale, etc. For the granting of an ex parte search order, apart from providing evidence of the validity and enforceability of trade secret, it is sufficient pro - vide the court with reasonable evidence of the possible misappropriation. The effectiveness and exploitability of the results and evidence gathered during the search order execution are subject to the commencement of the proceedings on the merits within the man - datory deadline of 31 calendar days from the confirmation of the search order. During the proceeding, if the claimant has pro - vided serious indications that its claims are well-founded and has identified documents, elements or information held by the other party that confirm these indications, it may ask that the court order their production or request the information from the other party. Furthermore, the claimant may request that the court compel the opposing party to disclose identifying information regarding the individuals involved in the production and distribution of the infringing goods or services. The judicial authorities in both urgent and merit proceedings may also order, upon a justified and proportionate request by the applicant, that information be provided on the origin and distribution networks of the goods or services infringing a right; this information is obtained by questioning the infringing parties or third parties.
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