Morri Rossetti & Franzosi assisted an Italian innovative company in complex trade secrets and unfair competition litigation

The Firm assisted Alfa S.r.l. – an Italian company active for over ten years in the technological development of tintometric systems for the colour industry – in litigation with a competing company alleging the unlawful use of its trade secrets in the course of Alfa’s business activities.

In the proceedings, the company was assisted by a team comprising Prof. Mario Franzosi, Of Counsel, and Federica Santonocito, Partner, together with Michele Loconsole, Senior Associate.

The dispute, which has already been heard at two levels of jurisdiction and may now reach the Italian Supreme Court, concerned cross-claims. On the one hand, the competitor sought a declaration of infringement of confidential know-how and of unfair competition on the grounds of professional misconduct; on the other, Alfa sought a declaration that unlawful acts of disparagement and boycott had been carried out to its detriment.

In a judgment published on 14 September, the Bologna Court of Appeal dismissed the claims brought by both parties, upholding the judgment of the Court of First Instance and confirming – with regard to the claims brought against Alfa – that the competitor had failed to prove that the information at issue was actually secret, that it had commercial value precisely by virtue of its secrecy, and that it was protected by appropriate measures designed to keep it confidential.

The Court also clarified that the number of files and their storage on electronic media are not, in themselves, sufficient to establish the existence of an organised database that could be effectively used by the competitor, unless its contents are identified and described with sufficient precision.

The same lack of specificity also prevents the scope of the requested injunctive and remedial measures from being properly defined, as a general order to refrain from using, delete or destroy all of the information could also cover information that is not protected, thereby unjustifiably and disproportionately restricting the freedom to conduct business guaranteed by Article 41 of the Italian Constitution and Article 16 of the Charter of Fundamental Rights of the European Union.

This is a legally significant principle in several respects, as it reaffirms the conditions under which protection may be obtained for confidential know-how, while also clarifying that the failure to identify the relevant trade secrets directly affects the related unfair competition claim.

The judgment is not yet final, and all parties may lodge an appeal before the Italian Supreme Court within the applicable statutory time limits.