Case law on Trade Secrets in Italy

Court of Ancona, Specialised Section on corporate matters, 30 September 2021 no. 1175

Article 98 of the Industrial Property Code protects – as an industrial property right – company information and technical-industrial experience, including commercial experience, provided that three requirements are met: 1) the information must be secret, in the sense that it must not be generally known or easily accessible to experts and operators in the sector; 2) it must have an economic value, precisely because it is secret; 3) it must be subject to measures that are reasonably adequate to keep it secret.

Court of Bologna, Specialised Section on corporate matters, 04 July 2007

The specific protection of secret information remains reserved to information qualified by the coexistence of the three requirements provided for by Article 98 of the of the Industrial Property Code.

Among these requirements, fundamental importance is given to the principle that such information must be kept “secret”, by adopting the supervisory measures that experience recognises to be functional, and which serve as an adequate obstacle “against infringements that can be reasonably foreseen and opposed”.

Adequate measures

Court of Milan, Specialised Section on corporate matters, 09 October 2020

A database protected pursuant to Article 102 bis of the Copyright Law is also protected pursuant to Article 98 of the Industrial Property Code when it contains information that is not easily accessible and knowable and is protected from external access through the use of access firewalls to the company network, company user accreditation methods and username and password access methods.

Court of Turin, Specialised Section on corporate matters, 15 November 2018 no. 5246

The appropriation by a competitor, without the consent of the proprietor, of information which are economically relevant to the latter’s business, whether technical or commercial, including financial, management or marketing information, stored with adequate protection measures in databases, and therefore constituting trade secrets, within the meaning of Article 98 of the Industrial Property Code, is unlawful, also from an unfair competition point of view of (in the present case, the Court found that the offence in question had been committed, with consequent issue of an injunction and an order to pay damages, by a company competing with the plaintiff, consisting of former employees of the latter, both of which operating in the sector of lifts, electrical systems and work equipment, since the stolen information: (a) is secret, in so far as it relates to customers’ personal data, their addresses, financial data, due dates of the scheduled maintenance work (lifts) and prices and conditions applied, it not being necessary, for the purposes of secrecy, that they be inaccessible, it being sufficient that their acquisition be subject to greater efforts, than those required to carry out an accurate search even by means of the Internet (b) has economic value, since an economic effort was required to obtain them and their use entails a saving in terms of costs and time, given that the data controller does not have to carry out a search and cataloguing of the data relating to its customers and to the services provided to them from time to time; (c) is contained in databases subject to significant protection measures: access to the relevant software requires an official company account, which can be accessed through a computer authorised to operate on the internal network, following a formal request and authorisation by the person in charge, by means of passwords with a high degree of security; furthermore, there are further limitations on access, read or write-only, to specific areas and databases, in order to perform certain operations or extractions).

Court of Bologna, Specialised Section on corporate matters, 12 November 2018

The requirement of the adoption of adequate measures for the protection of secrets set out in Article 98 of the Industrial Property Code is fulfilled if both the conclusion of confidentiality agreements with employees and the adoption of an IT security system aimed at protecting company information occur.

Court of Bologna, 25 October 2017

Pursuant to Article 98 of the Industrial Property Code, in order to be protected as such, 'secret information' must comply with the requirements listed herein: 1) it must be subject to the legitimate control of the holder, meaning the originator of the information or the person authorised to use it with the owner's consent; 2) it must be secret: in this sense, it is not necessary that it is absolutely inaccessible, but it is necessary that its acquisition, when possible, is subject to not indifferent efforts, greater than those required to carry out an accurate search; 3) it must have economic value, since an economic effort was also required to obtain it and a similar economic effort would presumably have been required to duplicate it; 4) it is subject to secrecy measures, with particular reference both to physical protection, ensured by adequate protection systems, and to legal protection, ensured by adequate information, given to third parties coming into contact with the information, as to its confidential nature and the need for it to be kept confidential.

Court of Bologna, Section IV, 13 October 2017 no. 2222

Company information that is covered by an adequate video surveillance system and to which, by using personal usernames and passwords provided by the company, each employee may only have access if it relates to his area of competence, without being able to access other documents, is subject to adequate protection, as prescribed by Article 98 of the Industrial Property Code.

Court of Venice, Specialised Section on corporate matters, 16 July 2015 no. 4457

With regard to the adoption of “measures that are to be considered reasonably adequate” to maintain the secret nature of the information, it is worth noting that the submission to such measures may be admitted in the face of any conduct that is unequivocally incompatible with the entrepreneur’s intention to make the information accessible to the public, such as the predetermination of the circle of the company’s collaborators to whom the communication is permitted (in this case, only the sales staff working on the organisation of the event), as well as the preparation of measures aimed at preventing the “leakage” of the information (in this case, the use of a personal password to access the company’s computers and the software used by the sales and accounting staff).

Non–adequate measures

Court of Milan, Specialised Section on corporate matters, 23 February 2017 no. 2302

Corporate information that has not been the subject of adequate and reasonably enforceable measures to safeguard its secrecy (e.g. with a username and password) cannot enjoy the protection contemplated by Articles 98 and 99 of the Industrial Property Code.

Court of Milan, 10 May 2016

For the purposes of the application of Article 98 of the Industrial Property Code, the implementation of a system of personal access passwords to the company’s computer systems does not allow the information contained therein to be regarded as covered by adequate confidentiality measures if the investigation has not confirmed adequate compliance with those measures or sufficient supervision by the company of its compliance.

Court of Bologna, Section IV, 27 July 2015 no. 2340

To store the technical drawings in a private personal computer, equipped with a password and in exclusive use of the shareholder-director and co-designer, is an insufficient measure to confer the character of secrecy within the meaning of subparagraph (c) of Article 98 of the Industrial Property Code on the business data under examination, since in the first place, the information had been entered in a private computer which was in the exclusive possession of the shareholder rather than in a company computer system directly manageable and controllable by the company itself, in addition to the fact that the company does not appear to have exercised any control, given specific directives or placed limits on the use of the data and information in question in order to prevent their misuse.

Court of Milan, 14 February 2012

The requirement of appropriate measures to ensure the secrecy of information necessary for protection under Article 98 of the Industrial Property Code is not met by merely providing employees with a password and login and not taking any further measures.

Court of Appeal of Turin, Specialised Section on corporate matters, 19 May 2017 no. 1130

Within the scope of trade secrets regulation, the requirement of secrecy is not automatically and inevitably precluded by the abstract possibility of obtaining the secret information by reverse engineering a competitor's product, but only if the reverse engineering process is relatively simple for an expert; even the complex writing of a software program falls within the scope of reasonably adequate security measures, provided that the format, although open and readable, is difficult to comprehend.

Court of Bologna, Specialised Section on corporate matters, 02 May 2017

Information that can be obtained by observation, chemical analysis or mechanical decompositional examination of the competitor’s product (so-called reverse engineering) cannot be protected as secret; however, since the requirement of non-accessibility is of a relative nature, the abstract possibility of tracing the information necessary for the realisation of a product through analysis and decomposition of the product itself is not sufficient to exclude its protectability, being also necessary that the process of reverse engineering can be qualified as “easy” for “experts and operators in the sector”. If, on the other hand, it involves particularly considerable time or costs in relation to the characteristics of the market, the information can also be said to be secret and find protection against abusive acquisition in the legal provision under consideration.

Court of Bologna, 5 January 2015 no. 21945

Information that can be obtained by observation, chemical analysis or mechanical decompositional examination of the competitor's product (so-called reverse engineering), cannot be protected as secret under Article 98 of the Industrial Property Code. However, since the requirement of accessibility is relative, in order to exclude the protectability of the information necessary for the realisation of a product, it is not sufficient that it is abstractly possible to trace it back by means of the analysis and decomposition of the product itself, being also necessary that this process of reverse engineering can be qualified as “easy” for “experts and operators in the sector”; if, on the other hand, it involves particularly significant time or costs in relation to the characteristics of the market, the information can be said to be secret and find protection against its abusive acquisition in Article 98 of the Industrial Property Code.

Court of Milan, 05 June 2012

In relation to the notion of secrecy, the accessibility that excludes the protectability of information – referring to the knowledge and experience of qualified persons, “the experts in the sector” – must be considered to be that condition that allows the perception of the technical solution without the need for costly and time-consuming reverse engineering operations, or even the knowledge that can be obtained independently of the examination of the device for which the protection in question is claimed.

No case-law on this issue.

In Italy, case-law research is usually carried out through the exam of the so-called “massime”, i.e. excerpts of Courts’ decisions summarizing the principles of law established by the same Courts in relation to the disputes’ subject matters. Only rarely the “massime” mention also the kind of remedies applied in the specific case. Therefore, in order to report the kind of remedies applied by the Italian Courts in case of disputes concerning trade secrets, we should examine the entire content of the relevant decisions and this would imply a huge amount of work.

That specified, please find below the 2 “massime” mentioning the applied remedies, which we found and which include of course the injunctions.

Court of Turin, Specialised Section on corporate matters, 15 November 2018 no. 5246

The appropriation by a competitor, without the consent of the proprietor, of information which are economically relevant to the latter’s business, whether technical or commercial, including financial, management or marketing information, stored with adequate protection measures in databases, and therefore constituting trade secrets, within the meaning of Article 98 of the Industrial Property Code, is unlawful, also from an unfair competition point of view of (in the present case, the Court found that the offence in question had been committed, with consequent issue of an injunction and an order to pay damages, by a company competing with the plaintiff, consisting of former employees of the latter, both of which operating in the sector of lifts, electrical systems and work equipment, since the stolen information: (a) is secret, in so far as it relates to customers’ personal data, their addresses, financial data, due dates of the scheduled maintenance work (lifts) and prices and conditions applied, it not being necessary, for the purposes of secrecy, that they be inaccessible, it being sufficient that their acquisition be subject to greater efforts, than those required to carry out an accurate search even by means of the Internet (b) has economic value, since an economic effort was required to obtain them and their use entails a saving in terms of costs and time, given that the data controller does not have to carry out a search and cataloguing of the data relating to its customers and to the services provided to them from time to time; (c) is contained in databases subject to significant protection measures: access to the relevant software requires an official company account, which can be accessed through a computer authorised to operate on the internal network, following a formal request and authorisation by the person in charge, by means of passwords with a high degree of security; furthermore, there are further limitations on access, read or write-only, to specific areas and databases, in order to perform certain operations or extractions).

Court of Milan, Specialised Section on corporate matters, 17/04/2018

In a case where former employees of a company wrongfully misappropriated confidential information from the latter in order to engage in an unlawful diversion of customers, the injunctions against contacts with the company's current customers issued against the former employees must be limited to a specific time frame.

No case-law on this issue.

Court of Bologna, Specialised Section on corporate matters, 12 November 2018

In the event that the indiscriminate acquisition of the entire corporate server of the defendant, also containing personal data of employees and confidential corporate information of the defendant company, has taken place during the execution of a judicial computer description, it appears necessary to preserve the confidentiality of these data by means of their secrecy, pending the possible trial on the merits.

Court of Bologna, Specialised Section on corporate matters, 23 February 2018

In description proceedings, the plaintiff's interest in obtaining evidence may be countered by the defendant’s need to protect its confidential business information, so that if the defendant in infringement of the plaintiff's patent and know-how challenges the patent’s validity and the protection requirements related to the know-how, considering that such challenges may possibly be developed in the course of the case on the merits, it is appropriate to order the secrecy of the accounting and commercial documents acquired in the course of the description.

Court of Milan, Specialised Section on corporate matters, 16 January 2018

Defence attorneys and court-appointed experts are bound by an obligation of confidentiality in respect of the facts known to them while assisting in description proceedings; the parties are bound by an absolute prohibition against the dissemination and use of anything that may constitute confidential information acquired by a competitor as a result of description proceedings, in connection with the hypotheses referred to in Articles 98 and 99 of the Industrial Property Code and unfair competition.

Court of Milan, 27 December 2010

In order to ensure the protection of confidential information, the Judge authorising the description may, for example: a) allow only the parties' attorneys and their technical consultants, in so far as they are bound by professional secrecy, to be present at the description operations; b) provide that copies of the documents taken on that occasion be kept in a sealed envelope at the clerk’s office, allowing only those professionals access to them; c) invite the bailiff to take all necessary measures to protect the confidentiality of the information.