The Technology Disputes Law Review: Italy

Overview

Technology disputes in Italy involve a large and varied amount of litigation, ranging across sectors covered by traditional patents (mechanical, electronic and also pharmaceutical patents); telecommunications and other fields that are often hotbeds of new industry technology standards that can be protected by standard essential patents (SEPs), and which may in turn generate licensing disputes; and also sectors involving more innovative and trend-setting technologies, such as the use of algorithms and artificial intelligence (known as AI).

Trade secrets also represent a less traditional area that has seen a rise in disputes because of the combination of an improved protection system (following implementation of the EU Trade Secrets Directive in 2016) and an increased sensibility regarding the high costs, length and inefficiencies of the current patenting and patent dispute systems. Trade secrets are, in fact, largely used to protect new technologies that do not fit (or at least not completely) within the traditional scope of patent protection.

Copyright disputes arising from unauthorised use and sharing of proprietary content, usually by large social network platforms, represent a sector that generates a significant amount of complex litigation, involving a delicate balance between the opposing interests of right holders, internet service providers (ISPs) and users.

Finally, in recent years we have observed an increase in disputes in which the use of technology is a common feature, and which sit at the intersection of data privacy and consumer litigation.

i Intellectual property disputes and patent disputes

Cause of action

Despite the large variety of fields and rights involved in the technology sector, the largest number of technology actions in Italy still revolve around traditional patent infringement litigation, with a steady increase in the amount of litigation involving SEPs. Infringement disputes embrace both product patents and process patents (particularly frequent in the pharmaceutical sector). Copyright actions based on unauthorised use of proprietary content on social media and other content sharing platforms also accounts for a large part of recent technology litigation.

In Italy, the key remedy for patent infringement (and infringement of intellectual property (IP) rights in general), including in trade secrets litigation, is a civil action in which the patent holder can obtain a final injunction (including a penalty for any breach of the injunction), seizure or recall from the market, as well as assignment or destruction of infringing goods; and the award of legal costs and damages, including moral damages. Publication of the judgment completes the range of remedies available to a patent holder. In disputes involving SEPs, the right holder aims to obtain an injunction with the final purpose of forcing the competitor to accept fair, reasonable and non-discriminatory (FRAND) terms.

Although damages may include compensation for direct economic damage, loss of profits and non-economic effects, such as moral damage (i.e., damage to commercial reputation or defamation), punitive, treble or statutory damages are not recognised under Italian law. Damages can be awarded on the basis of the different criteria set out under Article 125 of the Code of Industrial Property (CPI).2 The fair royalty and the infringer's account of profits often replace the traditional loss-of-profits criteria, which present a very high burden of proof for the right holder. Where the above criteria do not help in the specific case, the amount of damages can still be equitably determined by the judge.

Licensing-related disputes may still involve infringement claims along with damage compensation claims. Typical remedies in this kind of action are termination of the agreement and damage compensation. Where industry standard technology patents are involved, assessment of the nature of the patent may be required.

Common issues

Patent and technology-related litigation in general in Italy is a serious undertaking requiring considerable expertise. For this reason, engaging suitable experts and specialist counsel is key (lawyers in Italy generally do not have a technical background). In cases where infringement is not straightforward (for example, infringement under the doctrine of equivalent, indirect or contributory infringement), an evaluation of very complicated aspects may be required, going beyond technical analysis. Close cooperation between lawyers and technical experts may therefore make a significant difference to the success of a case.

Any lack of certainty as to the robustness of a patent may become an issue when seeking to enforce the patent, since typically one of the main defences raised by an infringer is a challenge to the validity of the patent to be enforced.

If the patentee does not have comprehensive evidence of the infringement, a preliminary identification order may be required to access the infringer's premises and search and identify the technology allegedly in violation of the patent holder's rights. This is particularly important when acting to obtain a preliminary injunction, where a solid prima facie case is one of the requirements for success.

Another common issue in patent disputes concerns identification of the competent court and the prevention of forum shopping. In patent litigation involving the validity of a patent, competence lies exclusively with the court of the place where the patent has been registered; however, in infringement disputes, the right holder has discretion to choose between the place of business of the infringer (if based in Italy), the right holder's own place of business (if the infringer is located abroad) or the place where the infringement occurs (i.e., where the product is manufactured or sold). It is not uncommon to involve third-party distributors as the basis for establishing the competence of a specific court.

Determination of the competent court is also critical in SEP disputes. When it comes to definition of the terms of technology licensing, the choice of one court over another may make a huge difference.

In disputes involving trade secret misappropriation, the main difficulties encountered by right holders concern the burden of proof of the infringement. Apart from evidence of the type and content of secrets allegedly violated, and of the requirements for their protection,3 providing evidence of the misappropriation by the infringer often proves very difficult. Search and identification orders are a key measure to obtain this kind of evidence.

Finally, obtaining proof of damage, and quantification of damages, may be tricky and ultimately too difficult and time-consuming. In most cases, the plaintiff is not in a position to prove having suffered a loss of profits as a consequence of an infringement and must therefore rely on the profits obtained by the infringer through the sale of the protected technology. Full discovery is not provided by the Italian system and access to the infringer's accounting books requires the judge to issue a specific disclosure order and the appointment of an accountant to review the relevant documents. An infringer's refusal to disclose relevant documentation is not subject to any specific sanction and may result in a disappointing quantification of damages (damages equitably awarded by judges are rarely satisfactory for the right holder).

ii System development and service delivery disputes

System development disputes do not differ substantially from IP-related disputes in terms of remedies, evidence and witness structure, and enforcement. The following sections will therefore focus on the peculiarities of these kinds of disputes compared with general IP litigation.

Cause of action

A large number of technology actions in Italy arise from information technology (IT) contracts. Such actions usually concern contractual breaches, with one of the parties seeking compensation for damage arising from a breach of contractual obligations – often in relation to the level or quality of IT services provided. These disputes often start upon the conclusion of the business relationship and may also involve the migration of data to the platform managed by the newly appointed service provider, which is why clients may require interim measures to assure the continuity of services.

The key remedy for IT contract litigation in Italy is a civil action in which the client is usually seeking compensation for damage (or the migration of data to another provider), while the provider seeks payment for services already rendered and, sometimes, for the migration of data and transfer of source code or IP rights.

Common issues

As with patent litigation, IT contract litigation in Italy is a serious undertaking requiring considerable expertise. Engaging suitable experts and specialist counsel is therefore also essential in these disputes. Assessment of breaches of service level obligations or non-compliance of IT systems in terms of functionality, interaction or performance often requires evaluation of complex technical aspects.

In the absence of clear evidence of a breach, the court may require a preliminary technical description. The court will appoint an expert in charge of assessing the relevant technical issues, with the assistance of the experts appointed by the parties. This is particularly important when, for example, the status of a platform may change pending the court case. This preliminary remedy often provides leverage to push the party at fault to settle. In practice, in the subsequent civil case, courts frequently base their decision on the outcome of this preliminary analysis.

iii Data processing disputes and class actions

Apart from traditional IP- and IT-related litigation, we have recently seen a substantial increase in disputes in which the use of technology is a common feature, and which are situated at the intersection of data privacy and consumer litigation.

The cause of action is breach of data protection or consumer laws, usually in relation to violation of the principles of transparency, fairness and the informed consent of individuals.

The kind of legal action that can be brought depends upon the specific piece of legislation allegedly breached, as well as the remedy sought by the claimant; for example, it may take the form of an administrative proceeding before the competent consumer or data protection authority, or a legal proceeding in the civil courts, such as an action seeking compensation for damage – a class action in the case of consumer litigation.

The action may be brought about by a claimant or initiated ex officio by the competent authority (i.e., the data protection or consumer authority), following, for example, investigations or reports by third parties.

Procedural rules such as timelines, interim remedies and enforcement are determined according to the procedural rules governing the relevant legal action. Similarly, the appeal phase depends on the first instance proceedings; for example, a decision issued by the data protection authority may be challenged before the civil courts, following the rules of special labour proceedings, while a decision issued by the consumer authority may be challenged before the special administrative courts.

Whatever the specific procedural features, the significance of this type of dispute is that it highlights the growing interplay between data protection and consumer litigation within the realm of technology. The circumstance that the same general principles (for example, transparency in dealing with individuals) are in fact addressed by both consumer and data protection laws, providing options in the way of different redress procedures, can lead to a domino effect whereby it is not unusual for data protection proceedings to be reconfigured and then re-presented as a technology consumer dispute, and vice versa.

Furthermore, this kind of technology dispute also has an EU-wide dimension, in the sense that litigation started in one country is usually re-presented in another – again, by a claimant or ex officio by competent authorities.

This kind of technology dispute raises major concerns for companies in light of (1) thresholds for applicable fines under data protection laws (€20 million or 4 per cent of the global annual turnover of the preceding year, whichever is higher); (2) the impact of adverse and sometimes unpredictable decisions in the case of class actions; (3) the significant fallout in terms of reputational damage, in respect of not only customers, but also investors and business partners; and (4), probably most importantly, the fact that such disputes are fundamentally linked with technology and concern the latest developments at the very core of the digital transformation impacting all businesses makes them seem somehow inevitable.

Year in review

In the area of data protection and consumer litigation, we have observed a recent increase in actions generally brought on the initiative of the competent data protection and consumer authorities. In this regard, there have been leading cases in which Italian regulatory authorities have made the first use of specific procedural measures available to protect individuals' fundamental rights and freedoms within the realm of data protection and consumer legislation.

A further boost to data privacy litigation will presumably come from the new class action law, which entered into force in Italy in May 2021.4 This new law significantly expands plaintiffs' rights as, among other things, plaintiffs are entitled to join a class action even after the court's favourable judgment on the merits has been issued.

In the area of patents, although trade secret protection is often preferred to the long and costly patenting process, there are strong expectations that, once completed, the implementation of the EU Unitary Patent system will foster trust in and provide impetus to both the patenting system and patent litigation.

Finally, and conversely, the implementation of Article 17 of the Digital Copyright Directive5 may actually result in a decrease in the number of copyright disputes started by right holders against ISPs in connection with the unauthorised uploading and sharing of copyrighted content by users of social networks platforms, as user-generated content may be exempt if it is uploaded and made available for purposes of (1) quotation, criticism or review, or (2) caricature, parody or pastiche.

Claims and remedies

i IP disputes – interim or provisional remedies

Interim and precautionary measures can be requested both prior to and in the course of patent litigation. No particular pre-action steps are required. Furthermore, there is no pretrial phase in the Italian legal system.

A recent introduction to the system is the possibility of asking the president of the court division specialising in business matters to order a preliminary technical opinion,6 to serve as an alternative dispute resolution procedure and provide an objective basis on which to settle patent disputes and prevent litigation. Unlike the interim measures described below, a request for a preliminary technical opinion does not require there to be a risk of imminent and irreparable harm to the right of the applicant. Such an opinion may focus on both the validity of a patent and its infringement.

Remedies available to the patent owner include preliminary injunction, identification (search) and seizure orders. In addition, the right holder is also entitled to obtain an order against the alleged infringer or other persons involved in the infringing activities for disclosure of documents and information about the origin and distribution network of the infringing goods or services. This kind of remedy is often relied upon by the right holder in copyright litigation to obtain information about users of a content-sharing platform who use, upload and share protected content without authorisation.

Injunctions, identification and seizure may be granted on the basis of a patent application while still pending, provided that the application has been published or directly notified to the alleged infringer.

These measures may be ordered on the basis of a specific motion filed with the competent court, provided that the following two basic requirements are met: (1) fumus boni iuris (i.e., a solid presumption of the validity of the patent and evidence of the infringement); and (2) periculum in mora (i.e., the urgency of the matter because of a danger of imminent and irreparable harm deriving from the infringer's activities).

The preliminary relief may be also granted ex parte (i.e., without the court first informing the adverse party of the motion). However, the judge may issue an order ex parte only where there is a very strong prima facie case and informing the alleged infringer would seriously impair the chances for the patent holder to obtain concrete protection of its rights.

Orders granting injunction, identification or seizure may be appealed within 15 days of their notice to the defendant.7

Interim injunctions or equivalent measures granted prior to the establishment of an action for infringement must be followed by the action for infringement within 20 working days or 31 calendar days; failure to do so shall result in the expiration of the order.

ii Periods of limitation

The limitation period for patent infringement is five years from the date the right holder knew or ought to have known the facts upon which the action is based. In principle, validity actions can be brought until the expiration of the patent.

Damages claims in patent litigation are also subject to a limitation period of five years.

In contrast, contractual claims (including damages claims) are generally subject to the longer period of limitation of 10 years.

The limitation period for contractual claims is 10 years from the occurrence of damage or another relevant contractual event presented in court.

Courts and procedures

i IP disputes – specialist courts and special procedures

Competence in civil litigation regarding patent matters – including in patent litigation – is concentrated in a limited number of court divisions specialised in business matters (currently 22 across the country, located in Milan, Brescia, Turin, Trento, Bolzano, Venice, Trieste, Genoa, Bologna, Ancona, Cagliari, Campobasso, Catanzaro, Florence, L'Aquila, Perugia, Rome, Potenza, Naples, Bari, Palermo and Catania). Judges do not normally have a technical background, so the court usually appoints a technical expert to support the judges on matters of patent validity or infringement.

During the investigations carried out by the court-appointed expert for this purpose, the parties are entitled to appoint their own experts to represent them in the technical examination process consisting in the exchange of briefs and opinions, meetings with the court-appointed expert, laboratory tests and experiments and the like. At the end of this process the court expert files a final written report. Usually, judges follow their appointed expert's technical conclusions and arguments, although there is no legal duty to do so. The last word therefore rests with the judges, who may disagree with their own technical experts.

The Italian patent litigation system does not provide for jury trials or lay judges. Italy has an adversarial court model and decisions of the courts are exclusively based on the evidence presented by the parties, with no inquisitorial power conferred on the judge. Inquiries and testing may be ordered by a judge solely on technical issues. If the hearing of witnesses is requested by the parties and admitted by the court, a judge may ask questions and seek specific clarifications from witnesses, technical experts and counsel.

Furthermore, there is no statutory presumption of the amount of damages under court procedure. Damages are quantified based on evidence provided by the parties (see above).

ii IT contractual disputes – specialist courts and special procedures

In contrast to IP disputes, in civil litigation competence for purely contractual matters lies with ordinary civil courts, unless an IP right is also involved in the dispute, in which case competence automatically vests in the court divisions specialising in IP matters. Judges do not normally have a technical background, so they often appoint a technical expert to support them on IT contract matters.

During the investigations carried out by the court-appointed expert, the parties are entitled to appoint their own technical experts and have their say in the technical examination process. The examination process ends with a final written report filed by the court expert. In the vast majority of cases, judges follow entirely the expert's technical conclusions and arguments, although there is no legal duty to do so. The last word therefore lies with the judges, who may disagree with their technical experts.

iii Schedules and timelines

The expected timing for obtaining a first instance decision in an IP case – which is immediately enforceable – may range from two to three years depending on a number of factors, including the level of complexity, the need for technical investigations and the competent courts' workload. Timing does not differ in a material way from the timing of other disputes falling within the competence of the courts specialised in business matters and not involving patents, although patent litigation tends to have a slightly longer timeline than trademark litigation, where no technical examination is needed. In general, the duration of proceedings has steadily shortened since the introduction of the specialised courts.

The timings in IT contract disputes do not differ in a material way from the timings in other disputes falling within the competence of the civil courts, and these range from two to three years, although IT contract litigation tends to have a slightly longer timeline because of the need to appoint technical experts.

Evidence and witnesses

i IP disputes – evidence and witnesses

The burden of proof lies with a plaintiff who alleges an infringement or the invalidity of a patent. As a general principle, each party must prove the facts on which its claims or exceptions are based. The decision of the court must then be based solely on the evidence provided by the parties. The Italian legal system does not provide for discovery.

Notwithstanding this, if the alleged infringement affects a process patent, the burden of proof shifts to the defendant. In the case of a process patent, there is a legal presumption that any item that is identical to that obtained by the patented process originates from that process when (1) the item obtained through the patented process is new; or (2) the identical item has most likely been produced through the patented process and the owner of the patent fails, using reasonable efforts, to identify the process by which the item was actually obtained.

However, although full discovery is not provided under the Italian legal system, in Articles 121 and 121 bis of the CPI, the law provides the option to request the infringer to make available certain documents or to supply information about its suppliers and distributors.8 In particular, in civil litigation the court may order the disclosure of specific documents or information relevant to the proceedings.

Legal privilege is not specifically regulated under Italian legislation. As a general principle, attorney–client communication is considered privileged and lawyers are not obliged to give evidence of information acquired in the course of their professional activity.

However, the issue of privilege is not as critical in Italy as it is in other legal systems that provide a formal process of disclosure. Such a process is unknown in Italy, where in principle the parties have to rely on their own dossier of evidence, which is submitted to the court.

Anyone with technical and scientific knowledge, experience and training may be engaged by a party as an expert for evidentiary purposes. Experts generally provide written reports forming a pro veritate opinion regarding infringement or validity of the patent at issue. These reports are normally filed by the plaintiff at the beginning of the interim proceedings or the action on the merits to support the plaintiff's claim. Advice rendered by a party's expert has in principle the same value as other evidence or supporting documents filed by the party.

Each party calls its own witnesses and specifies the issues on which each witness must be examined. The judge examines the witnesses identified by the parties and the parties may not question witnesses directly or cross-examine them. Parties are not required to call witnesses to appear before the court if they deem this to be unnecessary. Inventors may be called as witnesses unless they appear as a party in the action, in which case the inventor may be heard in court subject to different formalities.

ii IT systems and contractual disputes – evidence and witnesses

The evidence and witness principles and rules discussed in Section V.i apply to IT contract disputes. Specifically (and without prejudice to the general rule that each party must prove the facts on which its claims or exceptions are based), once the plaintiff proves the alleged breach (i.e., poor service performance), it is up to the defendant to prove that failure in performance was beyond its control; for example, because of actions of the client or force majeure or other unforeseeable causes.

iii Protection of trade secrets

Civil proceedings in Italy are public. Italian procedural laws include general provisions that allow courts to exclude the public from hearings only for reasons relating to security, public order and decency. All the briefs, deeds and documents submitted during the proceeding are confidential and accessible only by the parties and their respective lawyers and counsel, although the final decision is public. In cases where a party needs to protect its confidential information from being accessed by the other party, it may require the judge to limit the access to the adverse party's lawyers and consultants only or to limit the access to certain information only (full information would remain available to the court and its experts only).

With specific regard to patent infringement proceedings, Article 121, Paragraph 3 of the CPI provides that if the court issues an order of disclosure at the request of one of the parties, it shall take all the measures necessary to protect confidential information of the opposing party not relevant to the legal action.

Enforcement

Enforcement of a judgment awarded by the court, especially with respect to search and seizure orders, is carried out by the winning party with the cooperation of the court's bailiff and, in most cases, that of a court expert appointed by the judge.

Pure injunction orders do not require specific enforcement but are often assisted by a monetary penalty that applies if the infringer does not comply with the court order. However, enforcement of the penalty is not automatic or straightforward and requires a new intervention by the court, first assessing the violation and then ordering the payment.

Destruction or withdrawal of infringing goods should be complied with spontaneously by the infringer. If not, the right holder may require the intervention of the bailiff to enforce the order.

Damages awarded by the court are also normally paid spontaneously by the infringer upon a written request by the right holder. However, if this does not occur (because the infringer has no financial capacity or simply refuses to pay), the right holder will have to start foreclosure proceedings.

Alternative dispute resolution

In civil actions for infringement of IP rights, the parties may settle a matter at any time up until judgment is delivered. Settlement negotiations may occur formally between lawyers of the parties.

Actions for patent infringement may be subject to arbitration, provided that the parties expressly agreed to do so in writing by means of a specific provision contained in a contract or other binding written instrument. Arbitration of disputes regarding patent rights may take place both prior to the filing of an infringement action and in the course of the proceedings. Arbitration prior to an infringement action is normally preceded by a legal notice whereby the owner of a patent invites the alleged infringer to cease any conduct that may constitute an infringement, or alternatively to agree and submit the dispute to arbitration.

Mediation is possible as an alternative to court patent proceedings. Mediation can be used at any stage of a dispute. It may be considered as a last resort to avoid costly litigation once possible negotiations conducted by the parties alone have failed. This procedure can also be used at any time during litigation to explore the possibility of settlement.

Mediation is not a suitable procedure for settling all kinds of disputes. Where bad-faith patent infringement or counterfeiting is involved, mediation (which requires the cooperation of both sides) is unlikely to be appropriate. Mediation is especially suitable where the dispute occurs between parties to a continuing contractual relationship, such as a licensing or distribution agreement or a research and development contract.

Unlike in patent litigation, mediation is a suitable procedure for settling IT contract disputes, both where the dispute occurs between parties to a continuing contractual relationship and where the parties have to agree on complicated procedures to migrate data upon the conclusion of the contractual relationship. In practice, in the latter situation, court proceedings (including interim measures) would probably prove to be ineffective from a timing viewpoint.

Outlook and conclusions

There is no questioning the fact that technology has become a key driver in all aspects of contemporary life and the disruption it can bring to entire economic, political and social systems has been further exacerbated by the covid-19 pandemic. From a legal perspective, the fast development of technology entails questions about the risks or legal consequences that may arise from both the exploitation of technology and the increasing reliance placed on it by businesses, and also by individuals.

The rise in litigation involving both data privacy and consumer issues, and the need to update Italy's legislation on class actions, are clear indicators of the new issues that may develop in relation to uses of technology. The data protection and consumer litigation trend is indeed expected to continue to grow, especially in light of current patterns of increasing digitalisation and close collaboration between national regulatory authorities at EU level.

In the more traditional area of patent disputes, material developments are expected from the full and final implementation of the EU Unitary Patent system and the anticipated appointment of the Court of Milan as a division of the Unified Patent Court (UPC). Implementation of the Unitary Patent has been delayed by the issue of the ratification of the UPC Agreement in Germany and by Brexit. If, as expected, the Court of Milan becomes a division of the UPC, the amount of patent litigation in Italy is very likely to surge.

As to copyright, the implementation of the Digital Copyright Directive, and notably Article 17 thereof, will very likely have a strong impact on the current copyright dispute scenario, especially with respect to the question of the potential liability of content-sharing platforms for the infringing nature of content posted by their users. The implementation bill is still under discussion, with the debate focused on the interpretation of the 'best efforts' provision set out in Article 17 of the Directive. The new law is expected to be adopted by the end of summer 2021.

Footnotes

1 Lorenzo de Martinis, Francesca Gaudino and Gaetano Iorio Fiorelli are partners and Lorenza Mosna is a senior associate at Studio Professionale Associato a Baker McKenzie.

2 Article 125 – Compensation for damage and restitution of profits obtained by the author of the infringement.

  1. Compensation due to the damaged party shall be set according to the provisions of Articles 1223, 1226 and 1227 of the Civil Code, taking into account all of the pertinent aspects, such as the negative economic consequences, including lost income, of the owner of the infringed right, the benefits achieved by the infringer, and in the appropriate cases, non-economic elements, such as the moral damage caused to the owner of the right by the infringement.
  2. The judgment on compensation of damage may establish payment of an overall sum set on the basis of the case-file and the presumptions arising thereto. In this case the loss of profits shall however be determined as an amount not less than the royalties that the author of the infringement would have had to pay, had he obtained a licence from the owner of the infringed right.
  3. In any event, the owner of the infringed right may request the recovery of the profits obtained by the infringer, either as an alternative to compensation for the loss of profits or to the extent that they exceed that compensation.

3 Article 98 – Scope of protection.

  1. Protection is granted to trade secrets. Trade secrets are deemed to be business information and technical-industrial experience, including commercial information and experience, subject to the legitimate control of the owner, as long as that information:
    1. is confidential, in the sense that as a whole or in its precise configuration and combination of its elements it is not generally known or easily accessible for experts and operators in the field;
    2. has an economic value inasmuch as it is confidential;
    3. is subject, by the persons to whose legitimate control it is subject, to measures considered reasonably adequate to keep it confidential.
  2. Protection shall also be granted to data relating to tests or other confidential data whose processing entails a considerable effort and whose presentation is conditional upon the marketing authorisation of chemical, pharmaceutical or agricultural products implying the use of new chemical substances.

4 The new law (Law No. 31 of 12 April 2019) entered into force on 18 May 2021 and, among other things, introduces the following changes: (1) the extension of the scope of the class action to anyone holding an 'individual homogeneous right'; (2) a third phase for the formation of the class and adjudication of the quantum, led by the common representative of the class and the delegated judge appointed by the court; (3) a contingency fee system providing for the defendant's obligation to pay the claimant's lawyer and the common representative of the class an amount in addition to the one that he or she will have to pay to each member of the class; (4) the possibility of settling the dispute during the admissibility phase and up until the oral discussion, or upon a joint initiative of the common representative of the members of the class and the defendant, even after the court decision on the merits; and (5) the possibility of anyone having an interest in stopping or preventing the repetition of a behaviour being able to file a request for an injunction order.

5 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC.

6 Article 128 CPI.

7 Appeals are heard by a panel of three judges belonging to the same court issuing the order. However, the individual judge who issued the order will not be part of the panel.

8 Article 121 – Allocation of the burden of proof.

  1. Without prejudice to the case of forfeiture due to non-use, the burden of proving the nullity or forfeiture of the title of industrial property always lies with the party that challenges the title. Subject to the provision of Article 67, the burden of proving infringement lies with the owner. The proof for forfeiture of the trademark due to non-use may be provided by the owner in accordance with Article 24.
  2. If a party has provided serious clues that its claims are well-grounded and has identified documents, elements or information held by the other party that confirm those clues, it may request that the court orders their production or requests the information from the other party. The party may also request that the court orders the other party to provide the elements for the identification of the persons involved in the production and distribution of the goods or services that constitute an infringement of the industrial property rights.
    2 bis. In the event of an infringement committed on a commercial scale through acts of piracy in accordance with Article 144, the court, on request from the party, may also order the production of the banking, financial and commercial documentation that is in the possession of the other party.
  3. In taking the actions identified above, the court shall adopt measures suitable to guarantee the safeguarding of confidential information, after consulting with the other party.
  4. The court shall deduce items of evidence from the responses that the parties give and from any unjustified refusal to comply with the orders.
  5. In the matters under this Code, the court-appointed expert may receive the documents relating to the questions posed by the court even if they have not yet been submitted in the case, making them known to all of the parties. Each party may appoint more than one expert.

Article 121 bis – Right of information.

  1. In both proceedings for interim relief and proceedings on the merits, on the basis of a well-grounded and proportionate request from the requesting party, the judicial authority may order that information be provided on the origin and distribution networks of goods or the provision of services that violate a right under this law by the author of the infringement and any other person that:
    1. has been found to be in possession of goods that infringe a right, on a commercial scale; has been caught using services that infringe a right, on a commercial scale;
    2. has been caught supplying on a commercial scale services used in activities infringing on a right;
    3. has been identified by persons under letters (a) or (b) as a person involved in the production, manufacture or distribution of those goods or in the supply of those services.
  2. The information indicated in paragraph 1 may, among other things, include the name and address of the producers, manufacturers, distributors, suppliers and other prior owners of the goods or services, as well as of wholesalers and retailers, and information on the quantities produced, manufactured, delivered, received or ordered, and also the price of the goods or services in question.
  3. The information is acquired through questioning of the persons identified in paragraph 1.
  4. The requesting party must provide a specific indication of the person to be questioned and the circumstances on which each is to be questioned.
  5. If the court admits the questioning, it shall ask the persons identified in paragraph 1 for the information indicated by the party; it may also ask them, on its own initiative or on a party's request, all of the questions it deems useful to clarify the circumstances at issue in the questioning.
  6. Articles 249, 250, 252, 255 and 257, paragraph 1, of the Code of Civil Procedure, shall apply.

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