ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
The claimant may also request the return of profits gained by the infringer, awarded either in addition or as an alternative to lost profits, but only for the portion exceeding the damages awarded. Italian law does not recognise “punitive damag- es” per se. However, judges retain discretionary powers to ensure that remedies are proportion - ate to the seriousness of the infringement and The merit judgment assessing the infringement usually includes remedies such as permanent injunctions, market recalls, astreinte ( ie, a recur - ring monetary penalty for non-compliance), assignment, or, alternatively, destruction of the infringing goods by the respondent itself. As a general rule, it is not possible to obtain an order that limits an employee’s subsequent employment unless the trial has ascertained the infringement of the trade secret and know-how by the ex-employee. In such cases, astreinte may serve as an effective deterrent by imposing recurring financial penalties for each breach or delay in complying with the court order. the interests of third parties. 7.3 Permanent Injunction There are no fixed limitations on the duration of a permanent injunction, which will typically remain in force until the protected information enters the public domain – provided this occurs through lawful means rather than as a result of any wrongful act. 7.4 Attorneys’ Fees Winning parties, including defendants, have the right to recover legal costs and attorneys’ fees, as determined by the judge based on rates out - lined in specific legislation.
Normally, the award of legal fees is automati - cally made by the judge when issuing the final decision, taking into consideration the estimate made by the winning party in the final plead - ings, along with supporting evidence provided by this party related to the legal and technical costs incurred during the litigation. 7.5 Costs In addition to attorneys’ fees, winning parties, including defendants, can recover the costs related to the court expert stage – ie, the costs anticipated for the court expert and costs incurred for the party-appointed expert. In rare cases, the so-called reaction costs (such as investigations, preventive expert analysis, purchases of allegedly counterfeited items, requests for forensic and technical opinions, draft of warning letters) can be awarded with the final judgment as part of the damages (so-called actual loss). In order to be awarded, the winning party has to provide evidence of the costs incurred (mainly through invoices) either during the evidentiary phase or, if incurred later, in the final pleadings. It is important to distinguish the appeal at the preliminary measures stage from the appeal on the ordinary proceedings. Decisions issued in urgent proceedings (eg, granting or dismissing preliminary injunctions and/or seizure claims) can be appealed, both by the claimant and respondent, within 15 days. After the first hearing, which is normally held within one/two months from the filing of the 8. Appeal 8.1 Appellate Procedure
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