ITALY Trends and Developments Contributed by: Giovanni F Casucci, EY Tax & Law
Enforcement Directive. Unlike the French sys - tem, the Italian order permits the collection of all forms of evidence, including financial data, con - cerning suspected infringements, and allows the claimant to participate in the access operations. The Italian system also ensures a careful balance between evidence collection and the protection of confidential information, often via protective orders. In trade secrets litigation specifically, court-appointed experts and forensic teams play a key role in what is referred to as “massive data acquisition” , which is then analysed and filtered in a secondary phase. If conducted properly, such measures are often decisive in resolving the dispute. Italy has also long applied Regulation 1206/2001, which allows any EU judge to request the gath - ering of evidence in other jurisdictions. A 2005 refusal by the UK to comply with an order of the Court of Genoa (Tedesco v RWO) led to a CJEU case (C-175/06), which confirmed the compatibil - ity of Italy’s descrizione order with this regulation. Since then, Italian specialised courts have rou - tinely granted cross-border evidence-gathering measures in order to concentrate the determina - tion of the tort and damages in a single dispute. This proactive approach is especially relevant not only in pure trade secrets cases but also in hybrid ones (eg, patent and know-how, software and know-how, franchising and trade secrets). Avoiding Abusive Enforcement and Balancing Interests The Trade Secrets Directive makes clear in Recit - al 22, and reiterates in Article 7, that misuse of trade secret protections – such as intimidation or abuse of process – must be avoided. Although the Italian Industrial Property Code (CPI) has not expressly implemented such a mandatory rule (Article 7.2 “Member states shall ensure” ), gen -
eral civil procedural measures already address bad faith conduct, as laid out in Article 96 of the Civil Procedure Code. In terms of balancing interests, the Italian imple - mentation of the Trade Secrets Directive (as per Article 13.1 lett. (e)) expressly requires judges to consider the “the legitimate interests of the parties and the impact that the acceptance or rejection of the measures could have for them” (Article 124-6bis lett. (e). The Directive’s “alternative measures,” found in Article 13.3, have been similarly incorporated into Articles 124-6ter and quater of the CPI. As a result, Italy’s legal system is well equipped to issue strong enforcement measures, always guided by the “balance of interest” principle – a concept embedded in its legal culture and judi - cial education for centuries. Conclusions In light of the above, the author believes that, given Italy’s primary role in the enforcement of trade secrets, any reader should, at the very least, be curious to deepen their understanding of the Italian system in this highly specific field. From a business perspective, Italy should be considered a strategic location for developing a more efficient approach to managing litiga - tion – one that avoids duplicative proceedings between the same parties concerning the same trade secrets and, where applicable, related industrial property rights. The author hopes that specialised journals and other independent media outlets will recognise this reality and begin to objectively acknowledge and respect Italian jurisprudential practice, set - ting aside stereotypes rooted in ignorance.
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