Anna Maria Stein has published an article titled The Italian Supreme Court Provides Guidance on Compensation for Damages of IPRs Infringement, 44 E.I.P.R. 185 (2022). Here is the abstract:
In Italy, the quantification of damages is determined as part of the main proceedings. The burden of proof rests on the claimant. Under Italian law, the alternative methods for assessing the compensation for damages from IPR infringement are set out in the art.125 of Industrial Property Code (IPC), which is substantially in line with the Enforcement Directive. Nevertheless, the application of IPC art.125 has created discussions among scholars and case law. With two recent decisions, the Supreme Court has clarified the interpretation of art.125 paras 2 and 3 of the IPC and provided a guidance in the application of the criteria of the "reasonable royalty" and of the "disgorgement of the profits" as well as on the simplification in the burden of proof.
The first case discussed is a patent case in which the court held that, under article 125(3) of the Italian IP Code and article 13(1)(a) of the Intellectual Property Rights Enforcement Directive, the plaintiff has the option of recovering the infringer's profit attributable to the infringement, regardless of whether the plaintiff can demonstrate that the infringement caused the plaintiff to lose profits and regardless of whether the infringement was innocent. For previous discussion on this blog, citing an EPLaw post by Giulia Pasqualetto, see here. The other is case is a trademark matter, in which the court held that a plaintiff may recover “price of consent” damages, essentially a reasonable royalty, as long as there is sufficient record evidence for the court to estimate what such a hypothetical royalty would have been—but that in the present case, no such record evidence existed, and that in the absence of such evidence there is no right to presumptive damages.