The Milan IP Court On The Protection Of Confidential Information And The Unlawful Solicitation Of Employees

Author:Ms Elena Martini
Profession:Martini Manna

With a preliminary decision of 26 February 2018, the IP Court of Milan recapped the principles governing unfair competition for the violation of confidential information and the unlawful solicitation of employees (docket no. 53629/18, Judge Mrs Giani). We recently mentioned a decision regarding a similar matter here on this blog.

In this specific case, three agents of the petitioner simultaneously terminated the respective agency agreements and subsequently contacted the petitioner's customers to offer them products of their new principal, competing with the former. In doing so, according to the petitioner, its former agents and its competitor used the confidential information of the same petitioner, such as contractual documentation, information on the machines installed on customer premises, company development plans, and company and commercial policies. Hence the commencement of the precautionary action against all of these subjects (the "defendants"), to have them enjoined from continuing the actions being challenged.

In the decision under review, the Judge, after having heard some witnesses indicated by the parties, concluded that the petitioner's claims were grounded and that the misappropriation of its information by the defendants certainly amounted to an act of unfair competition pursuant to Art. 2598 no. 3 Civil Code. Recalling consistent precedents, the decision highlighted in particular that "this rule is applicable even if not all the requirements of Articles 98 and 99 IP code [which protect confidential information] are met, for example because the company information is easily accessible or not adequately protected". The Judge also pointed out that the confidentiality of the information must be assessed with reference to its entirety and combination, and is therefore not excluded from the fact that individual pieces of information are in the public domain or easily accessible. In the order, however, it was not assessed whether the information at issue actually possessed the confidentiality requirements necessary to make it protectable also pursuant to the aforementioned Articles 98 and 99 IP code.

The order further specified that "there is no doubt that information about company policy, customer lists, contractual conditions applied and in particular sales prices, discounts applicable to customers and the relative percentage of commissions that are paid to agencies, is...

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