ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
as a preliminary injunction and/or seizure of the infringing goods, astreinte , market recalls, etc. As to the main proceedings, the standard time - line, involving revocation and infringement issues, is typically around three years on aver - age. The recent reform of the CPC introduced a series of simplifications in terms of timings and the number of hearings to be held. Trade secret matters now usually involve four trial hearings: the first hearing, the appointment of the court technical expert, a discussion of the results of the court technical expert’s findings, and a final hearing. Trade secret misappropriation is usually proved through serious evidence. While fact witnesses are not frequently used, they may be called upon to support specific elements, such as the rea - sonable measures adopted by the trade secret Although Italian procedure does not formally provide for expert witnesses, party-appointed experts actively participate in the court techni - cal expert stage. Only the judge can examine the witnesses and the court technical expert, although this can be prompted by specific requests from the parties’ legal representatives. 7. Remedies 7.1 Preliminary Injunctive Relief The requirements for granting the interim injunc - tions are as follows: • Likelihood of Success on the Merits (fumus boni iuris): The party seeking the interim injunction must typically demonstrate a prima facie case, indicating a likelihood of success holder to protect the information. 6.3 Use of Expert Witnesses
on the merits of the trade secret misappro - priation claim. This involves showing that there is a valid and enforceable trade secret, a likelihood of misappropriation and a basis for legal action. • Urgency (periculum in mora): Interim injunc - tions are granted when there is an urgent need to prevent irreparable harm to the rights holder. The appreciation of the urgency is much more flexible than in other European jurisdictions (ie, several months from the infringement’s knowledge). Pursuant to Article 11.3(a) of the Trade Secrets Directive, any preliminary injunction granted must be followed by the initiation of proceedings on the merits within 31 calendar days. If the court orders a preliminary injunction, it is not compulsory for the claimant to post a bond. Nonetheless, this is advisable when the volume and/or the nature of the information is particular - ly extensive and sensitive, since it demonstrates the seriousness of the legal action. The amount of the bond depends on the volume and value of the information at issue, although there is no Compensation for damages in trade secret cas - es is typically based on the right-holder’s loss of profits. This may be calculated by evaluating the claimant’s reduction in turnover as a result of the misappropriation – though this connection can be difficult to establish – or by calculating the royalties the infringer would have paid for a legitimate licence, which may be doubled or tri - pled, depending on the circumstances. Alterna - tively, or additionally, the right-holder may claim actual lost profits due to market presence of the infringing products. statutory minimum or maximum. 7.2 Measures of Damages
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