In recent times Italian IP Courts have issued some interesting decisions related to the liability for abuse of process in cases involving infringement of IPR. Italian Law does not provide for a specific liability related to possible abuse in the enforcement of IPR. Such conducts may be assessed according to Article 96 of the Italian Code of Civil Procedure (ICCP), which provides for a general liability for abuse of process and allows the Courts to condemn ex officio the party which acted in bad faith or with gross negligence to pay the other party an amount determined on an equitable basis.
Introduction
During the years, Italian Case law has developed the doctrine of abuse of rights. This doctrine, which has been applied to different contexts, prevents individuals from enforcing their rights in a way that exceeds the purposes for which they were granted, causing harm to others or contradicting principles of good faith and fairness. A particular case of abuse of rights is the abuse of process (frivolous lawsuit and bad faith litigation). This is a particular case of liability under article 96 of the Italian Code of Civil Procedure (ICCP), which applies anytime the plaintiff (or the defendant) has acted in the proceedings in bad faith or with gross negligence (para. 1) or, in case of precautionary measures, when the right for which a precautionary measure was executed does not exist and the plaintiff has acted without normal prudence (para. 2).
In both cases, Article 96 allows the Court, upon request of the Party who suffered damages from the conduct of the other Party, to condemn the latter to pay costs and damages. Article 96 also allows the Court, in cases provided for in para. 1 and 2, to condemn ex officio the losing Party to pay the other party an amount determined on an equitable basis (para. 3) and to impose a fine up to 5000 Euros (para. 4).
In the past, article 96 ICCP has not been applied frequently by the Courts in proceedings related to IPR. In recent times we can notice an increasing number of cases in which the Courts, dismissing one Party’s claims, defence or appeal, applied Article 96 para. 3 and 4 c.p.c. ex officio. It is important to notice that the dismissal of the claim cannot justify per se the liability provided for in article 96 ICCP. The Court must assess on a case-by-case approach whether the conditions set forth in para 1 and 2 of Article 96 are met, considering all the relevant circumstances.
Recent case-law
For example, the Court of Milan (December 9, 2024 – order), in a precautionary proceeding related to trade secrets, according to Article 96 para. 3 ICCP, condemned the plaintiff to pay to each of the (six) defendants the amount of 12,000 Euros and, according to para. 4, imposed a fine of 5000 Euros. The plaintiff had asked the Court to grant an ex parte order for inspection, alleging that a competitor, with the complicity of former employees of his, was using his trade secrets related to a software developed for an important client. The plaintiff did not mention some important circumstances that, if known by the Court, would have led to a different interim decision. In particular, the plaintiff did not disclose to the Court that the information to be protected did not belong to him, since they had been assigned by contract to the client.
In another case related to software, the Court of Milan (March 3, 2026 – order) sentenced the Plaintiff to pay 6000 Euros in favour of the defendant, and imposed a fine of 1000 Euros. The Court dismissed the request to grant a preliminary injunction as inadmissible, since [a] the same request was already dismissed in the past and [b] a previous order of the Court allowed the defendant to use the software and the interpretation of the scope of such an order was within the jurisdiction of the previous Judge.
In a patent revendication case the Court of Appeal of Milan (January 14, 2026) dismissed the appeal and ordered the appellant to pay 25,410 Euros to the other Party according to Article 96 para. 3. The Court found that the appellant could easily assess that the appeal was ungrounded and noticed that the continuation of the proceedings in the appeal resulted in a delay in the granting of the patent, with a serious prejudice for the applicant.
On the current topic, it is worth it to mention a case related to the so-called AI “hallucinations” (Court of Florence, March 14, 2025 – order). In a trademark infringement proceedings, the attorney of one of the defendants supported a defence thesis by quoting Italian case law in his favour. When the plaintiff objected that such case law did not exist and/or which real wording was different from the one quoted, the attorney replied that this was due to a legal research carried out by a collaborator of him with the aid of AI, which “hallucinated” and generated an output that did not exist. He added he was not aware of the circumstance and asked the Court to decide the case without considering the (non-existing) case law, being his defence well-grounded anyway. The Plaintiff asked the Court to condemn the defendant according to Article 96 para. 1 and para. 3. The Court dismissed the request, since [a] the Plaintiff did not support it with any allegation related to the harm suffered (para. 1) and [b] no bad faith or abuse of the process could be found in the behaviour of the defendant, in spite of the error committed by his attorney which did not verify the output of the research conducted by his collaborator.
Conclusions
Italian IP Courts seems to be increasingly sensitive to the abuse of process, which occurs, as we have seen, when a party acts in court being aware of the groundlessness of its claim or without the diligence or prudence needed to assess the groundlessness of its claim and the consequences of its acts, or when a party starts a proceeding for dilatory purposes.