Search Order regarding Know-How: A recent successful case handled by Martini Manna & Partners before the Court of Brescia.
Our firm, Martini Manna & Partners, successfully assisted a world-leading company in the boiler industry in an interim dispute concerning the search order on know-how before the IP Court of Brescia.
The case originated from a search order, granted ex parte, upon request by a commercial partner against the client company. The request concerned an alleged violation of commercial know-how and the commission of acts of unfair competition related to drawings and construction documentation of drying plants. During the execution of the order, the entire content of the company's server and email inboxes was acquired en masse.
Following the establishment of the adversarial phase, the defendant requested, as a first step, access to the opposing party's confidential document containing the alleged know-how, and, in any case, the revocation of the granted order due to the lack of the requirements of fumus boni iuris and periculum in mora.
Regarding fumus boni iuris, the defendant primarily contested the absence of the “secrecy” requirement by Article 98 of the Industrial Property Code, paragraph 1(a). It argued that competitors offering entirely similar services were present in the market and that the exclusive ownership of such drawings had not been demonstrated. Furthermore, the claimant failed to prove that it protected its information with adequate measures to maintain secrecy, as required by Article 98 of the Industrial Property Code, paragraph 1(c). The submitted IT policies were generic, and the NDAs had limited effectiveness in both duration and scope.
Regarding periculum in mora, the defendant pointed out that the nearly two-year delay in taking action indicated a level of tolerance inconsistent with the alleged urgency.
With a decision dated November 12, 2024, the Court of Brescia revoked the search order granted ex parte due to the lack of fumus boni iuris, specifically stating that:
regarding the secrecy requirement, the claimant failed to provide valid evidence to counter the respondent's arguments. The Court clarified that "once the respondent was established and specifically contested the existence of the required conditions, it was the claimant's burden to outline the factual grounds capable of qualifying its technical know-how as a trade secret";
regarding the adoption of adequate secutity measures, the respondent had not demonstrated the implementation of appropriate confidentiality protection measures concerning the alleged know-how.
The revocation order was confirmed in the appeal stage with a decision dated January 31, 2025.
At the outset, it should be noted that the appointed panel, at the request of the respondent and in full compliance with the principle of adversarial proceedings, ordered access to the confidential document containing the opposing party’s alleged know-how before the trial phase.
In confirming the revocation order, the panel recognised that "the lack of evidence, which rightly led the first-instance judge to revoke the search order granted ex parte, was not overcome in the appeal phase. The appellant failed to provide the necessary elements to support: i) ownership of the drawings used for executing the contracts obtained from [X]; ii) the secrecy of its alleged know-how, based on the claimed (but unproven) uniqueness of the machinery it designed within the relevant technical field; iii) the adoption of adequate protective measures, given the technical reasons justifying the transmission of ‘native files’ to the contractual counterparty, while acknowledging the limited significance of the confidentiality agreements between the parties, as they only covered two specific projects (2014 and 2017)".
Moreover, regarding the appellant's objections that the challenged order improperly anticipated the merits of the case, the panel stated that for a search order to be granted, the fumus boni iuris must "be directly assessed concerning the procedural right to evidence - deemed useful or necessary for the future merits trial - and indirectly concerning the substantive right being protected." Meanwhile, periculum in mora must "be identified in the need to preserve evidence, as well as in the probable emergence of an imminent and irreparable harm to the asserted substantive right, a harm that the requested interim measure is intended to prevent".
On this point, as also recognised by authoritative legal doctrine and case law cited by the panel, "the judge's assessment of the existence of fumus boni iuris requires a summary verification of the validity of the enforced right and the interference of the contested implementation with the claimant’s right. This prevents the measure from being used to circumvent the claimant’s burden of proof or to harm a competitor". For a search order to be granted, "it is not sufficient for the claimant to demonstrate the right to obtain evidence. It must also allege and prove a concrete and serious need to protect its right, providing initial evidence indicating a concrete possibility that this right has been violated, thereby justifying the suspicion that alarms the claimant and highlighting the usefulness of an early verification." Similarly, "the issuance of the order cannot be justified simply by the usefulness of the evidence concerning the asserted claim, and it cannot disregard the likelihood of an existing industrial right."