Trade Secrets 2025 Comparisons

In Italy, the protection of trade secrets is governed by statutory law, which has been harmonised at the European level, and further shaped by case law interpreting these statutes. Primarily, the protection of trade secrets in Italy falls under the remit of the Industrial Property Code (Legislative Decree No 30 of 10 February 2005, referred to as the CPI), reflecting its alignment with European law, specifically Directive (EU) 2016/943. This directive aimed to standardise trade secret regulations across EU member states, in accordance with the mandatory implementation of Article 39 of the TRIPS agreement, and was incorporated into the CPI through Legislative Decree No 63/2018. This legal framework is further complemented by provisions within the Civil Code and the Criminal Code.

The CPI provides protection from the unauthorised acquisition, use or disclosure of trade secrets (Articles 98 and 99). It also establishes rules concerning the confidentiality of trade secrets during civil legal proceedings (Article 121-ter) and specifies civil remedies for the misappropriation of trade secrets (Article 124, paragraphs 6-bis, 6-ter, 6-quater). These provisions are supplemented by Articles 2598, 2599, and 2600 of the Italian Civil Code, which govern unfair competition, including the misappropriation of trade secrets with a particular focus on competition issues.

In situations where confidential information is misappropriated but does not qualify for protection as a trade secret, the only legal recourse may be under unfair competition law. Consequently, this would exclude the jurisdiction of specialised IP courts and the typical IP remedies, such as the gathering of evidence and seizure, as well as specific criteria for damages compensation.

Moreover, unauthorised disclosures that violate confidentiality agreements and industrial espionage are punishable under Articles 621, 622 and 623 of the Italian Criminal Code. This adopts a punitive approach that can operate independently or in conjunction with civil proceedings.

In Italy, the enforcement of trade secret rights can be pursued in both civil and criminal courts, as they serve distinct yet complementary purposes. Civil proceedings primarily aim to provide compensation to the trade secret holder for incurred damages and to prevent any further unauthorised activity through various measures, including injunctions, seizure, or the destruction of relevant materials.

While there is no local variation, conflicts may arise, as seen above, when deciding whether to pursue remedies under the CPI, Civil Code, or both.

Criminal proceedings, by contrast, are intended for the punishment of particularly serious behaviour, such as the deliberate disclosure of industrial or scientific secrets (Article 623 of the Criminal Code) or the violation of professional confidentiality (Article 622 of the Criminal Code), with penalties ranging from fines to imprisonment.

While the civil and penal jurisdictions are separate and operate concurrently, their decisions can sometimes be at odds with each other as they apply different standards of evidence and different criteria.

Articles 98 and 99 of the CPI, which incorporate the provisions of Directive (EU) 2016/943, protect trade secrets in Italy. The CPI protects many types of information, including technical, commercial, operational and scientific information if certain requirements are met.

Specifically, according to Article 98 of the CPI, trade secrets consist of business information and technical-industrial experience, including business experience, subject to the legitimate control of the holder, as well as test data or other secret data, the processing of which involves considerable effort and the submission of which is a prerequisite for obtaining marketing authorisation for chemical, pharmaceutical, or agricultural products involving the use of new chemical substances.

Although not explicitly stated as a rule within the CPI itself, Italian case law considers it essential that trade secrets are “identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that [they fulfil] the criteria of secrecy and substantiality” as per the clear definition in Article 1.1 lett (i) – (iii) of the EU Regulation 316/2014.

Furthermore, for information to be classified as a trade secret, it must meet three key conditions:

• it must be secret;
• it must possess economic value due to its secrecy; and
• it must be subject to reasonable measures taken by the owner to maintain its confidentiality (see 1.4 Elements of Trade Secret Protection).

Italian courts have detailed and extended the protection afforded by trade secret laws to various types of information: for example, technical information like formulas, processes, designs, prototypes, algorithms, and software code can be deemed trade secrets, as can business information such as customer lists, pricing models, and strategic plans.

Also, technical drawings and lists of components of an installation, even if lacking in originality per se, are eligible for protection as trade secrets insofar as, either as a whole or in the individual configuration of each of them, they contain elements that are not generally known, nor easily accessible to those in the industry.

Scientific research data, including experimental findings and methodologies, as well as operational knowledge and practical experiences such as manufacturing techniques or supply chain management processes, are also protected.

According to the CPI, trade secret protection is granted provided that the information:

• is secret, meaning that it is not, as a whole or in the precise configuration and combination of its elements, generally known or easily accessible to experts and practitioners in the field;
• has economic value because of its secrecy; and
• is subject to reasonable measures taken by the owner to maintain its confidentiality, such as through access restrictions or confidentiality agreements

Under unfair competition rules, the Civil Code does not provide specific requirements for trade secret protection. Instead, it provides a general clause addressing unfair competition, which applies to cases of misappropriation of both trade secrets and confidential business information, whenever such actions are carried out unfairly and in violation of business loyalty obligations. This provision grants, in particular, protection to confidential information when its misappropriation is likely to damage the legitimate holder from a competitive standpoint, even if the data does not precisely meet the requirements for trade secret protection as defined by the CPI.

Taken together, these legal frameworks ensure comprehensive protection for trade secrets, although they establish varying standards of proof.

Under Italian law, trade secrets must be subject to reasonable measures by their holder to maintain their confidentiality, as this is one of the key criteria for legal protection.

The reasonableness of the measures is assessed on a case-by-case basis, considering the nature of the information, its economic value, the industry standards and the context in which the information is handled. Courts typically evaluate whether the measures were sufficient to effectively limit access to the trade secret and whether they demonstrated a genuine intent to preserve its confidentiality.

The types of measures already recommended by Article 32 of the GDPR can serve as a good starting point, particularly with the appropriate adoption of internal codes of conduct.

For example, Italian courts have stated that limiting access to sensitive information, which is properly identified and marked, to employees or contractors on a need-to-know basis and requiring them to sign NDAs or confidentiality clauses are considered reasonable measures.

On the other hand, leaving sensitive information in easily accessible locations (such as unprotected folders on shared drives or unlocked offices), sharing trade secrets with a broad audience without imposing confidentiality obligations or ensuring secure channels of communication, have been deemed unreasonable or insufficient measures.

The concept of reasonable measures in protecting trade secrets is inherently relative and depends on whether the measures reflect the importance of the information, the risks of disclosure, and the norms and common practices within the specific industry.

Generally speaking, in Italy the disclosure of a trade secret to employees or subcontractors does not jeopardise its protection, provided the security measures mentioned in 1.5 Reasonable Measures are duly observed and the disclosure is limited to specific employees in proportion to their specific role and tasks within the enterprise, subject to the above security measures.

In accordance with Article 3 of the Trade Secrets Directive, independent discovery (paragraph a) or observation, study, disassembly or testing of a product or object that has been made available to the public or that is lawfully in the possession of the acquirer of the information who is under no legally valid obligation to limit the acquisition of the trade secret (paragraph b), are considered lawful.

In contrast, Article 4.3, letter (c), specifies that the “breach of a contractual or any other duty to limit the use of the trade secret” is unlawful.

Article 5.3 of the Copyright Directive 209/24 states that “[t]he person having a right to use a copy of a computer program shall be entitled, without the authorisation of the right holder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do.”

Furthermore, Recital 14 clarifies that “[a] person having a right to use a computer program should not be prevented from performing acts necessary to observe, study or test the functioning of the program, provided that those acts do not infringe the copyright in the program”.

This principle is fully confirmed by the ECJ decision of 2 May 2012, C-406/2010.

The Italian provisions contained in Article 64-ter of the Italian Copyright Law are fully compliant with this, stating: “The person who has the right to use a copy of the computer program may, without the authorization of the rights holder, observe, study or test the operation of the program, for the purpose of determining the ideas and principles on which each element of the program itself is based, if he performs such acts during operations of loading, displaying, executing, transmitting or storing the program which he has the right to execute. Contractual clauses agreed upon in violation of this paragraph and paragraph 2 shall be null and void.”

Consequently, when combining these two sets of regulations, if a trade secret is substantially embodied in software, it is not possible to prevent reverse engineering by a licensee or a contractual partner, and any contractual rule prohibiting such activity will be considered invalid.

In Italy, civil law does not provide separate and specific protection for trade secrets concerning computer software and technology; instead, these are covered by the general principles of trade secret protection derived from the CPI. Consequently, there is no additional, distinct legislation offering a specialised suite of protections in this area.

It is worth noting that, due to the limitations on software protection (which is primarily through copyright for the “expression” of the code and preparatory works), trade secrets are frequently used to protect aspects of software excluded from copyright, particularly algorithms. This approach can offer a broader scope of protection than copyright and may serve as a viable alternative to pursuing a patent application for computer-related inventions. Patent applications would become publicly available upon publication, potentially exposing them to the risk of nullity proceedings due to the prohibition outlined in Article 52.2(c) of the European Patent Convention.

In Italy, trade secret protection lasts for as long as the information is kept confidential. Once a trade secret is revealed and made available to the public, it loses its protected status, and this applies whether disclosures are intentional or accidental.

On the other hand, controlled disclosure (such as sharing the information under NDAs or other legal safeguards) does not affect the protection as long as confidentiality is maintained. To mitigate the impact of any disclosure, whether accidental or controlled, owners should implement robust security measures, use NDAs with all relevant parties, and ensure there are clear internal protocols for handling sensitive information.

In the event of accidental or unauthorised disclosure, owners should act promptly to isolate the incident by retrieving disclosed property, enforcing confidentiality covenants with involved parties, and enforcing legal steps as needed to prevent ongoing misuse. One way to detect potential vulnerabilities is by tracking who accessed the trade secret and what the conditions were under which they did so.

Owners of trade secret can license the use of their trade secret based on agreements in which the parties define the scope of use, the period and the obligations of the licensee to maintain confidentiality.

Of course, such agreements must be fully compliant with the rules imposed by EU regulation 316/2014.

In the event that the trade secret holder wishes to grant a licence, the contract must explicitly identify the trade secret and link its transfer to related materials.

Licensing does not inherently affect the existence of the trade secret as long as it is disclosed in a controlled manner and under stringent conditions that preserve its secret nature. The agreement should also:

• specify limits on the use of the trade secret;
• prohibit unauthorised sharing; and
• outline measures to safeguard its confidentiality.

To maintain the trade secret after granting a licence, the owner must take proactive steps, such as monitoring the licensee’s compliance with the agreement, enforcing contractual obligations, and ensuring that any sub-licensing or third-party access is subject to the same confidentiality requirements.

Frequently, trade secrets (as know-how) are included in mixed licence agreements with patent rights because they offer some advantages to the licensor, such as:

• the possibility to extend the validity of the licence agreement beyond the expiry date of the patents involved; and/or
• the possibility to justify restrictions on the licensee’s ability to carry out research and development, arguing that such restrictions are indispensable to prevent the disclosure of the licensed know-how to third parties.

Trade secrets differ from most other IP rights primarily because their protection is not granted through public registration or disclosure, but rather through maintaining the information’s secrecy. As a consequence, while the exclusivity of other IP rights is limited in time due to the nature and logic of the public registration or disclosure, trade secrets remain valid and enforceable as long as confidentiality is maintained.

Unlike patents, which require formal registration and are limited to new, inventive, and industrially applicable inventions, trade secrets do not need to meet specific originality criteria or undergo registration.

Compared to all other IP rights (including patents, trade marks and industrial designs) which also require formal registration under Italian law to secure exclusive rights, trade secrets do not offer monopoly rights over the information itself; instead, they protect against unauthorised use or disclosure.

In Italy, it is possible for a claimant to assert trade secret rights alongside other forms of IP rights, provided that the claims relate to distinct aspects of the same IP or business advantage. Trade secrets, however, can sometimes overlap with patents and copyrights depending on the specifics of the case. For example, a claimant might allege both patent infringement and trade secret misappropriation when the defendant has used both the patented invention and confidential know-how that was not disclosed in the patent application.

Similarly, in cases involving software or databases, trade secrets can protect undisclosed algorithms or functionality, while copyrights safeguard the expression of these ideas, such as source code or database structures. Trade secrets may also be invoked in situations where confidential marketing strategies or branding techniques have been unlawfully disclosed or exploited, particularly in the lead-up to the launch of a new brand or trade mark.

The Italian CPI already provides in Article 99 the possibility to take action against anyone who, at the time of acquisition, use, or disclosure, knew or, according to the circumstances, should have known that the trade secrets had been obtained directly or indirectly from a third party who used or disclosed them unlawfully. This can also cover the inducement to breach a confidentiality duty. Furthermore, it is possible to bring claims relating to trade secrets that do not directly rely on misappropriation but are based on other legal principles, such as breach of fiduciary duty or tortious interference:

• Employees have a fiduciary duty under Article 2105 of the Civil Code to act loyally toward their employer, prohibiting the disclosure or misuse of confidential information, including trade secrets (see 2.2 Employee Relationships).
• Article 2596 of the Italian Civil Code permits agreements that limit competition, provided they are confined to a specific area, activity, and duration not exceeding five years, to protect confidential information post-relationship.
• Moreover, employers may face legal action for unfair competition if they induce disloyal employees to disclose trade secrets, as prohibited by Article 2598 of the Italian Civil Code. The trade secret owner can seek an injunction to stop unlawful use, compensation for damages, and publication of the judgment to restore their reputation.
• Additionally, under Article 2043 of the Civil Code, the employer who encouraged the violation can be held liable for tortious acts if their intentional or negligent behaviour caused concrete harm to the competitor. In this context, it is crucial to prove the causal link between the wrongful conduct and the damage suffered, thereby ensuring effective protection of trade secrets and fair competition in the market.
• Finally, the general principles of good faith and fair dealing in the performance of contracts and the duty of solidarity arising from so-called social contact (contratto sociale) also come into play.

These claims often complement trade secret misappropriation cases and provide additional legal remedies.

In Italy, criminal penalties can be imposed for trade secret misappropriation if the misappropriation involves theft, illegal acquisition, or use of trade secrets.

The relevant provisions for criminal penalties are found in the Italian Criminal Code (Codice Penale). Articles 622 and 623 of the Italian Criminal Code govern crimes related to the disclosure and unlawful use of professional and business secrets.

Article 622 imposes a criminal sanction on anyone who, having gained access to confidential information within the context of employment or a position of trust, discloses or uses it without authorisation, causing harm to the owner of the secret. This crime is punishable by up to one year of imprisonment or a fine. Article 623 imposes a more severe penalty on anyone who knowingly steals, discloses, or uses a trade secret in violation of confidentiality or fiduciary duties. This offence is punishable by up to two years of imprisonment, along with a potential fine.

It is worth noting that under the Criminal Code, trade secret protection is granted alternatively when: 

• knowledge of confidential information is obtained through professional relationships (by reason of one’s state or office, or profession or art), the confidential information is disclosed without due cause for personal or a third party’s profit, and this disclosure causes damage to the trade secret owner; or
• knowledge of confidential information is unauthorised, the confidential information is disclosed without due cause for personal or a third party’s profit, and this unauthorised disclosure causes damage to the trade secret owner.

In addition, there is a specific rule that punishes the disclosure of scientific and industrial secrets through “technological” means (see Article 623, paragraph 3 of the Criminal Code), which states that anyone who, having become aware, by reason of their state or office, or their profession or art, of trade secrets or news intended to remain secret, concerning scientific discoveries or inventions, reveals them or uses them for their own or others’ profit, shall be punished by imprisonment of up to two years. Moreover, if the act relating to trade secrets is committed using any computer tool, the punishment is increased.

Alongside criminal proceedings, a trade secret owner can pursue civil claims under the CPI or Civil Code, seeking compensation for damages and requesting injunctions to prevent further misuse, thus allowing for a comprehensive approach to trade secret protection.

It is possible to bring a claim based on trade secret misappropriation that occurs in another country, but the requirements for such a claim depend on several factors, including jurisdiction and applicable laws.

Specifically, in cases where the misappropriation of trade secrets occurs in another country, the first issue is jurisdiction, namely whether an Italian court has the authority to hear the case.

Generally, a claimant must demonstrate a connection between the alleged misappropriation and Italy, and this connection can be established through:

• the defendant’s activities in Italy, such as conducting business, selling goods, or otherwise interacting with the Italian market;
• the harm caused in Italy, for instance, if the trade secret misuse negatively impacts an Italian business or causes damage to Italian assets or reputation; and/or
• agreements with jurisdiction clauses (if there is a contractual agreement that designates Italian courts as having jurisdiction over disputes related to trade secret protection, this can also create a basis for pursuing a claim in Italy).

Even if a claim is brought before an Italian court, the court must determine which country’s laws apply, analysing the conflict of laws rules.

As a member of the EU, Italy follows the EU Trade Secrets Directive (Directive (EU) 2016/943), which harmonises trade secret protection across member states. However, if misappropriation occurs outside the EU, Italian courts may apply Italian law if the harm is significant in Italy or if the parties have strong ties to Italy, or they may apply the laws of the country where the misappropriation took place.

In Italy, the requisite elements for a claim of trade secret misappropriation are:

• the existence of a trade secret, defined by its confidentiality, economic value, and the owner’s efforts to protect it; and
• unlawful access to the trade secret, which does not necessarily require actual use, but simply unauthorised access.

Therefore, a trade secret owner does not need to prove the actual use of the trade secret by the defendant, but must establish that the defendant gained access to the trade secret without permission. The absence of permission implies that the trade secret holder has to prove that the defendant gained access against their will through unlawful means, such as breach of contract, espionage or theft.

In the CPI, there is a prohibition against the acquisition, disclosure to third parties, or misuse of trade secrets, unless they have been independently obtained. Furthermore, the CPI states that the use or disclosure of a trade secret is also considered unlawful if a person knew or, under the circumstances, should have known that the trade secret had been obtained directly or indirectly from a third party who used or disclosed it unlawfully.

In Italy, the elements of a trade secret misappropriation claim remain consistent, regardless of whether the alleged misappropriation involved an employee or another party.

Employees are bound by a duty of loyalty under Article 2105 of the Italian Civil Code, which prohibits them from disclosing or misusing their employer’s confidential information during their employment.

Breach of this duty occurs when an employee steals trade secrets or uses them for personal gain, independently of whether the trade secret is publicly disclosed or simply misused internally. Italian courts recognise that employees, especially those with access to sensitive information, have a heightened duty of loyalty, with trade secrets protected by both industrial property laws and fiduciary duties.

According to Article 2125 of the Italian Civil Code, the fiduciary duty of the employee can also be extended after the employment contract through a written agreement, which must provide reasonable compensation for the employee and limit the duty to a specific subject, time, and place. 

Employers can reinforce these obligations through NDAs or confidentiality clauses in employment contracts, which clearly define the scope of permissible actions.

While employees are free to use the skills and general knowledge acquired during their employment, they are prohibited from exploiting specific trade secrets to benefit competitors or themselves.

The general rules on trade secret protection apply to joint ventures.

In Italy, industrial espionage is handled through a mix of criminal sanctions (Italian Criminal Code) and civil remedies (CPI), offering trade secret owners robust legal protection.

Industrial espionage is a crime punishable under Articles 621 (disclosure of the content of secret documents), 622 (disclosure of professional secret information) and 623 (disclosure scientific or industrial secrets) of the Italian Criminal Code, and is punishable, depending on the severity, by fines or imprisonment.

Criminal penalties, including imprisonment and fines, are enforced for espionage-related offences, while civil claims allow for significant remedies, such as damages, injunctions, and the destruction of infringing goods.

Analysing the body of case law that has developed over the years allows for the identification of “best practices” for safeguarding trade secrets. Courts have particularly valued:

• a detailed description of the protective measures adopted, along with justification for their suitability under the specific circumstances, provided by the company (for example, showing that documents or information are stored in locked archives or digital storage requiring password access to folders containing such confidential material);
• a breakdown of information by areas of competence, with provision of confidential credentials for access to the same and the preparation of digital storage systems with access procedures restricted solely to authorised individuals (in this regard, courts have viewed positively the existence of internal corporate policies – eg, regulations, decisions, or resolutions of administrative bodies, from which the methods of storing and transferring confidential information and the related responsibilities can be inferred);
• the adoption of a video surveillance system (to the extent permitted by labour law);
• the inclusion in employment/collaboration contracts of specific confidentiality clauses or covenants (NDAs) in which it is specified, inter alia, what trade secrets the party will be handling, to whom it may disclose them, in what manner, etc;
• the use of specific disclaimers on title blocks and technical documentation circulated both internally and externally by the company; and
• the requirement for employees or collaborators to return confidential information, without retaining either physical or digital copies, once the circumstances that justified its disclosure have ended (for example, after the evaluation necessary for the conclusion of a contract or, in the case of clauses in a collaboration agreement, after the termination of the collaboration).

In contrast, the following were not considered sufficient measures:

• the mere use of passwords or credentials for computer access, if not accompanied by additional protective measure; and
• contracts and confidentiality clauses that are too generic and standardised; indeed, such agreements must demonstrate a clear link to the main relationship to which the confidential information to be protected refers and the concrete confidentiality requirements that the NDA is intended to preserve, while also specifying:
1. the specific type of information being exchanged, avoiding vague generalities;
2. the medium, whether physical or digital, on which it is contained;
3. the mode of transmission;
4. the parties authorised to receive and handle it;
5. the duration of the obligation incumbent on the one receiving the confidential information (which should last until each piece of information becomes public knowledge, unless such disclosure is attributable to the recipient); and 
6. inclusion in the NDAs of specific penalties aimed at providing for early settlement of damages.

Generally, the best practices outlined above apply regardless of industry or the nature of the trade secret (eg, whether it involves software code or a chemical formula).

Finally, it is worth noting the existence of a relevant ISO standard. The ISO/IEC 27001 standard enables organisations to implement an information security management system and adopt a risk-based approach tailored to their size and evolving needs.

There is no specific regulatory provision or practice in relation to so-called exit interviews.

Normally, there are specific confidentiality clauses and non-competition covenants in employment/collaboration contracts (Article 2125 of the Italian Civil Code).

With regard to the professional knowledge and experience acquired by employees during their employment, Italian case law recognises that the former employee may lawfully make use of the “value” they bring to the company – namely, their skills and expertise that cannot be separated from their individual personhood.

If stipulated in the employment agreement or termination agreement, the employee may be required to provide written statements in relation to confidential information, trade secrets and know-how of which he/she has become aware within the scope of the employment relationship (eg, declaring that all files, documents, and media containing such information have been returned, destroyed, or permanently deleted).

Italian courts generally draw a clear line between an employee’s general knowledge and skills, and legally protectable trade secrets.

Accordingly, it falls to the employer to explicitly identify the content of the trade secrets in order to distinguish them from the employee’s general expertise, and to make these boundaries enforceable after the employment relationship has ended.

As a general rule, Italian jurisdiction does not recognise the doctrine of “inevitable disclosure”, even though Article 2125 of the Italian Civil Code provides a possible non-compete clause in the employment agreement subject to certain conditions regarding scope, duration (not exceeding five years for managers and three years for other employees), geographic limits, and the requirement of fair compensation for the employee.

Generally speaking, an entrepreneur seeking to hire one or more employees from a competing business is considered a legitimate exercise of economic initiative, protected under Article 41 of the Italian Constitution, as well as an expression of the free movement of labour under Article 4 of the same Constitution.

Accordingly, in order for the act of recruiting collaborators or employees to amount to an act of unfair competition under Article 2598, No 3 of the Italian Civil Code, it must be demonstrated that the conduct was pursued with the specific intent to harm the competing business – ie, with awareness and animus nocendi – and that the harm caused exceeds the ordinary prejudice resulting from an employee’s voluntary decision to change employers. In essence, the conduct must be aimed at depriving the competing entrepreneur of the return on their investment in human resources.

Relevant rules and case laws do not list specific best practices and/or approaches to be used before the individual is hired/during the onboarding process. Nonetheless, a few protective actions may be taken by the employer (eg, written statements that the employee’s knowledge does not violate the rights of third parties).

There are no strict prerequisites for filing a lawsuit in intellectual property matters, including trade secret cases. 

In particular, there is no need to send a warning letter. In fact, such an initiative may undermine the element of surprise necessary for ex parte orders and may prompt the recipient to initiate a declaratory action for non-infringement.

Before filing a lawsuit, it is highly recommended to verify that all the conditions for trade secret protection are met – especially the existence of reasonable protective measures at the time of the alleged misappropriation. It is also advisable to acquire formal, and, where possible, third party-certified, evidence of the misappropriation.

Under Italian law, there is no statute of limitations for bringing a claim for trade secret misappropriation.

However, the right to claim damages arising from a tort (which includes trade secret misappropriation) is subject to a five-year limitation period, starting from the date on which the tort occurred. This generally means that the IP right holder has five years from the date they became aware – or should have become aware – of the infringement to commence legal proceedings to claim damages.

A trade secret owner can initiate either urgent proceedings or merit proceedings by:

• filing a motion before the court for a search order and/or preliminary injunction and/or seizure; or
• serving the defendant with a writ of summons.

When possible (ie, when there are reasonable suspicions of misappropriation), the claimant is advised to first request a preliminary search order (known as descrizione). This is typically granted ex parte and is executed by a bailiff and court-appointed technical expert at the premises of the respondent or relevant third parties in order to collect further evidence of the misappropriation.

In Italy, unlike in most EU member states, trade secret enforcement falls under the jurisdiction of specialised IP courts (Sezioni Imprese), which are sections of the ordinary civil courts.

They are established mainly in the main courts located in the capital of each region, with the exception of Lombardy, Trentino-Alto Adige and Sicily (where there are two branches) and Valle D’Aosta (where there are no branches, as jurisdiction lies in Turin). In total, there are twenty-two courts with jurisdiction over IP matters in the first instance.

If one of the parties is a foreign entity, territorial jurisdiction is restricted to eleven specialised courts: Bari, Bolzano, Cagliari, Catania, Genoa, Milan, Naples, Rome, Trento, Turin, and Venice. This applies even in the case of multiple defendants, where one or more are incorporated abroad – even if they have a branch with permanent representation in Italy.

The appropriate court can be chosen based either on the place of residence/domicile abode of the defendant (forum rei) or on the place where the infringing activity took place (forum commissi delicti). 

Appeals from decisions of the specialised sections of the business courts of first instance are heard by the courts of appeal (Corte d’Appello). The courts of appeal also have specialised sections for intellectual property matters and sit in the capital of each region, with the exception indicated above.

The third and final instance for intellectual property matters is typically the Supreme Court of Cassation (Corte di Cassazione).

In the initial pleading, the claimant must set out clearly, specifically, and concisely:

• the factual and legal grounds for the claim; and
• the evidence and documents they intend to rely upon.

For trade secrets, in contrast to other registered IP rights, it is essential to:

• clearly describe the nature and content of the trade secrets;
• file a confidential version of the relevant documents with the court; and
• provide evidence of both the secret nature of the information and the reasonable measures taken to protect it.

Statements based merely on “information and belief” are generally only admissible to support a preliminary Descrizione request and are insufficient for proving misappropriation in full proceedings.

Italian jurisdiction provides a specific IP mechanism for gathering evidence ex parte, including the seizure of samples of products incorporating allegedly misused trade secrets.

The corresponding order, known as Descrizione, aligns with Articles 6 and 7 of the EU Enforcement Directive.

An ex parte search order is granted only when there is clear, pre-existing evidence of:

• the validity and enforceability of the trade secret;
• the infringement; and
• the risk of serious and irreparable harm due to continued unlawful conduct.

If this standard is not met, courts typically deny ex parte seizure and will instead rule on the matter through an inter partes hearing.

The Descrizione is conducted by a bailiff, often accompanied by a court-appointed technical expert using forensic tools. If authorised, the claimant’s lawyer and expert may also attend.

Due to the high risks associated with inter partes proceedings (which may compromise the entire legal strategy), it is recommended to first seek evidence through a Descrizione– a process that requires a lower evidentiary threshold for ex parte approval (see 5.7 Obtaining Information and Evidence). Once this evidence is obtained and the order is enforced and validated, the claimant may then consider requesting seizure and preliminary injunctions or initiating merit proceedings.

Italy is the leading jurisdiction in the practice of obtaining relevant information and evidence from the other parties or from third parties, both before and after lawsuits have begun.

The legal system provides several tools to facilitate the discovery of evidence before the lawsuit, by asking the court to grant an ex parte search order (Descrizione).

Such an order, which has been regulated in Italy for more than 50 years, is similar to the French Saisie-description but much more powerful and effective. 

The search order is usually granted ex parte. Only in very exceptional cases does the judge require an inter partes hearing.

In addition, the Italian courts were the first to grant ex parte cross-border search orders within the EU via the Council Regulation (EC) No 1206/2001 (now updated as Regulation (EU) 2020/1783).

Italian law authorises the search of not only technical, but also accounting documentation (commercial invoices and orders within the limits 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 provide 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 mandatory deadline of 31 calendar days from the confirmation of the search order.

During the proceeding, if the claimant has provided 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.

Pursuant to Article 9 of the EU Trade Secrets Directive, the Italian CPI (Article 121-ter) provides that courts may prohibit the use or disclosure of trade secrets contained in legal proceedings 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 protect 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 restricted number of subjects; and
• ordering the redaction or omission of confidential 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.

In Italy, the most common and effective defence to allegations of trade secret misappropriation 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
• lack of economic value of the information.

Notably, the alleged infringer is not required to demonstrate how their use of information differs from the claimant’s trade secret; instead, they can focus on undermining the claimant’s evidence. Timing is critical: if a Descrizione was granted and executed ex parte, the first defensive measure should be to demand that all collected data be kept strictly confidential and that the claimant be required to provide security.

Moreover, the Trade Secrets Directive introduces an additional defensive argument based on the principle of procedural abuse. In accordance with Recital 22, it is possible to challenge actions brought in bad faith – such as applications designed to unfairly delay or obstruct the respondent’s market access, or to intimidate or harass the respondent – as an abuse of process.

Italian jurisdiction does not provide for dispositive motions in the strict sense. However, urgent proceedings – often anticipating the outcome of ordinary litigation – frequently encourage the parties to reach a settlement, thereby saving significant time and resources.

The estimated costs of trade secret litigation in Italy can vary considerably depending on the nature of the trade secrets involved and the complexity of the case.

Typically, standard litigation in this field may range between EUR70,000 and EUR120,000, including both legal and technical expenses. However, where trade secret disputes involve IT-related issues, costs can significantly increase, ranging from EUR150,000 to EUR350,000, largely due to the cost of IT technical reports.

Although not yet widely adopted, litigation financing is available through private insurance policies taken out prior to the alleged unlawful conduct.

Trade secrets trials are exclusively decided by a panel of three judges in the merit proceedings (after a “pre-trial stage” conducted by a Judge Rapporteur), while the urgent measures are granted by a single judge (subject to a possible appeal to be decided by a panel of three judges).

There are no jury trials in trade secret or IP litigation.

IP rights proceedings in Italy are governed by the Italian CPC and, for certain specific issues, by the CPI.

A clear distinction exists between preliminary and main proceedings, particularly in terms of timing and their effectiveness in safeguarding trade secrets.

Preliminary proceedings allow trade secret holders to obtain a swift decision from the court within 6-12 months on average, including the appeal stage. These proceedings are very flexible (being not bound to procedural timelines) and usually, after the filing of the motion and the defensive brief, include a first hearing aimed at verifying the urgency, a technical stage on the validity and the infringement of the patent, and a final discussion focused both on the technical and legal aspects. The related order assessing trade secret misappropriation includes remedies such as a preliminary injunction and/or seizure of the infringing goods, astreinte, market recalls, etc.

As to the main proceedings, the standard timeline, involving revocation and infringement issues, is typically around three years on average. 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 reasonable measures adopted by the trade secret holder to protect the information.

Although Italian procedure does not formally provide for expert witnesses, party-appointed experts actively participate in the court technical 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.

The requirements for granting the interim injunctions 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 on the merits of the trade secret misappropriation 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 injunctions 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 particularly 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 statutory minimum or maximum.

Compensation for damages in trade secret cases 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 tripled, depending on the circumstances. Alternatively, or additionally, the right-holder may claim actual lost profits due to market presence of the infringing products.

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 damages” per se. However, judges retain discretionary powers to ensure that remedies are proportionate to the seriousness of the infringement and the interests of third parties.

The merit judgment assessing the infringement usually includes remedies such as permanent injunctions, market recalls, astreinte (ie, a recurring 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.

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.

Winning parties, including defendants, have the right to recover legal costs and attorneys’ fees, as determined by the judge based on rates outlined in specific legislation.

Normally, the award of legal fees is automatically made by the judge when issuing the final decision, taking into consideration the estimate made by the winning party in the final pleadings, along with supporting evidence provided by this party related to the legal and technical costs incurred during the litigation.

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 appeal, the new decision – unless the panel of judges orders a further or new court expert stage (which may add up to six months) – is issued a few weeks later and cannot be appealed further.

Decisions issued in ordinary proceedings (ie, proceedings on the merit) can be appealed within six months from the issuing or – if the losing party is notified of the decision – 30 days from the day of the notification.

The judge usually schedules only two formal hearings and the parties then have two rounds of written defences to present the case, reply and make their conclusion and final requests. These proceedings can last up to two to three years. The decision issued can be contested before the Supreme Court (but only for issues concerning the implementation and/or interpretation of the law).

The appeal process does not differ depending on the court where the case was filed.

In appeals against decisions issued in urgent proceedings it is possible to add facts and documents/evidence and the appeal judges review both factual and legal issues.

The appeal courts in merit proceedings review de novo factual and legal issues of the first instance court, while the Supreme Court (after the appeal stage) only reviews legal issues.

The court of appeal decides the case only on the specific grounds of appeal submitted by the appealing party. It is then up to the appealing party to clearly set out the issues they wish to appeal in the writ of summons introducing the appeal stage.

Appeals are primarily decided on written submissions, although at least two formal hearings are typically held, and an additional final hearing may be requested by either party for oral argument.

Trade secret theft constitutes a criminal offence that is prosecutable only upon the complaint of the trade secret holder. The holder must file a complaint with the public prosecutor within three months of becoming aware – or of when they reasonably should have become aware – of the theft.

The penalty for trade secret theft, depending on the seriousness of the crime and if IT instruments are involved, is imprisonment of up to three years or a fine of up to approximately EUR1,000.

The available defences in criminal proceedings largely mirror those in civil cases. However, a criminal charge may be dismissed if it is not proven that the offence involved fraudulent intent and/or resulted in actual economic gain – ie, profit derived from the exploitation of the trade secret.

The trade secret holder has several rights during the criminal process:

• Prior to trial, they may authorise private investigations to collect evidence of the theft.
• During the preliminary investigation, they may actively suggest avenues of inquiry, request that the public prosecutor pursue certain lines of investigation, or prompt the judge to admit additional evidence in support of the prosecution’s case.
• At all stages and levels of the proceedings, they may submit written briefs to both the public prosecutor and the judge, and suggest further evidence to support the charges.

Alternative dispute resolution (ADR) options are available and include mediation, arbitration, expedited arbitration and expert determination. However, ADR is not commonly used to resolve intellectual property disputes in practice. It is nevertheless not unusual for parties to reach a settlement – often upon the advice of their legal counsel – after litigation has commenced.