How does the law currently protect trade secrets?
The Italian legal system is largely compliant with the provisions introduced by the Trade Secrets Directive and, to a certain extent, already provides for a more far-reaching protection.
Specific provisions on the protection of trade secrets are contained in the Italian Code of Industrial Property, Secret information may only be protected if the requirements set out in the IPC are met; i.e. the information:
- is secret, in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to experts or operators of the industry;
- has commercial value because it is secret; and
- has been subject to reasonable steps under the circumstances, by the persons lawfully in the control of the information, to keep it secret.
As far as the secrecy requirement is concerned, according to the Italian Courts, this is met provided that the information is not generally known or readily accessible as a body or in the precise configuration of its components.
To that end, within a business it is not merely the adoption of measures aimed at preventing access to the secret information that is important, but also the existence of specific company directives that discipline the use of confidential information.
Businesses will therefore have to implement physical protections, appropriate regulations or internal disciplinary rules by means of which:
- the information is classified as confidential;
- employees and collaborators are informed of the confidential nature of that information and of the need to maintain it a secret; and
- the means of accessing and using the same and the relevant control procedures are disciplined.
How have the key concepts been applied by the courts?
Generally, these are considered to be protected, but the secrecy requirement is interpreted strictly by the courts. For example, the courts have held that an list of agents is not considered as protected because agents disclose their status to clients in normal commercial contacts.
However, such information is considered generally not easily accessible to experts and operators in the sector when it is not limited to a mere list, but is accompanied by additional relevant information that renders it a secret with commercial value.
Employee skills and knowledge: chemical formulae
As regards employees, during their employment they will be subject to a general duty of loyalty to their employer under the Civil Code. This includes not disclosing the employer’s trade secrets to a competitor. After their employment ends, however, the employees are free to use information which has become part of their general skills and knowledge, but may not use copies of documents or trade secrets in their new job.
In particular as far as chemical formulae are concerned, the Courts have stated that they cannot be considered as a part of the professional skills and experience of the ex-employee, who may not therefore use them in a competitor’s business.
Procedures concerning quality control
Some Courts have granted protection to procedures used in the activity of counseling in the area of quality certifications; but others have denied the legal protection, on the basis that they cannot be considered as generally not known, since they tend to reproduce the guidelines issued by certification bodies.
Remedies for breach
Since trade secrets are considered to be intellectual property rights, they enjoy all the remedies contemplated under the Italian Code of Industrial Property, including: injunctions, compensatory damages, removal of the infringing products from the market and seizure. Destruction of the infringing goods or their assignment to the rights holder may also be sought.