Unfair competition infringing trade secret and know how must be proven

The Italian Supreme Court of Cassation, with the recent order no. 37362 of November 29th 2021 ruled on the infringement of trade secrets, subtraction of know-how and in particular on the evidence of unfair competition ex art. 2598 of the Italian Civil Code.

The issue rises from a first instance ruling before the Court of Florence between an Italian company, operating in the field of design and production of elements of parts of motorbikes, bicycles and motor vehicles, and two American companies. The Italian company asked for the compensation for the damages by the defendant companies for failing to fulfill the non-disclosure agreement and the production agreement (with regards to the manufacturing of molds and the production of a hydraulic disk brake for cycles) reached with another American company, later acquired by the defendants, and in particular for the infringement of trade secrets, subtraction of know-how and acts of unfair competition.

The Court of Florence rejected the mentioned request of the Italian company and the Court of Appeal confirmed the first instance decision, rejecting the appeal. The Italian company filed therefore an appeal to the Supreme Court of Cassation.

The Supreme Court confirmed what stated in the previous level of judgment, stating that both Judges of merit had correctly examined the instructive material and had unanimously considered that particular innovative technical solutions a mere activity of engineering, which cannot be protected as know-how pursuant to art. 98 of the Code of Industrial Property, which defines trade secrets as “ corporate information and industrial-technical experience, including commercial ons, subjected to the legitimate control of the owner, where such information: a) is classified, in the sense that it is not generally known or easily accessible to experts and operators of the sector in its whole or in the precise configuration and combination of its elements; b) has an economical value because it is confidential; c) it is subject to measures considered reasonably adequate to be kept confidential”.

For what concerns the unfair competition pursuant to art. 2598 n.3 c.c., in accordance to which a subjet carries out acts of unfair competition if it “uses directly or indirectly any other medium not compliant to the principles of professional fairness and suitable to damage the company of another”, the Italian Supreme Court, in the order under exam, argued that the judges of merit had correctly considered that the divulging conduct of the supposed trade secrets had only been alleged by the applicant company and that “even with regards to the protection ex. Art. 2598 n. 3 c.c. (which assumptions are less rigorous than the protection ex. Art. 99 c.p.i) the “evidence of the conduct contrary to the professional fairness and its suitability to damage the fair competitor, through the use of technical knowledge used by another company” was not provided, since “ in the case under exam it would have been a mere engineering activity, easily reproducible by the experts of the field”.

Therefore, the Supreme Court ruled the appeal of the Italian company as unacceptable.