On 19 February 2020, the President of Poland signed the Act Amending the Civil Code and Certain Other Acts, which introduced significant changes in the examination of intellectual property cases. Despite the state of epidemic proclaimed in Poland and the suspension of procedural and court time limits, the date when the law comes into force has not been changed, meaning that the majority of the new provisions will come into effect on 1 July 2020.
The amendments are intended to introduce a specialised judiciary, following the example of the EU trademark and industrial design court, whose function is currently performed by XXII Department of the Regional Court in Warsaw. To this end, the act transfers intellectual property cases to be heard in the first instance by regional courts, and makes it possible to appoint only certain first and second instance courts to hear all intellectual property cases. It also makes intellectual property cases a separate category of court proceedings, and makes it compulsory for parties to be represented by a professional attorney.
Intellectual property cases
The new act makes intellectual property cases a separate category to be examined in separate proceedings.
Intellectual property cases include those concerning the protection of copyrights and neighbouring rights, the protection of industrial property rights and the protection of other rights over intangible assets, as well as cases on preventing and combating unfair competition, on the protection of personal rights involving the use of personal property for the purposes of individualisation, on advertising or promoting a business, goods or services, and cases on the protection of personal rights in connection with scientific activities or inventions.
Compulsory representation in court
One of the significant novelties introduced by the amendment is compulsory representation of the parties to intellectual property cases by professional attorneys starting from the proceedings before the court of first instance. The only exception to this is for cases where the value of the subject matter of the dispute does not exceed PLN 20,000. At each stage of the proceedings, the court may also exempt the parties from compulsory representation if it is justified by the circumstances, in particular the low degree of complexity of the case.
Additionally, the rights of patent attorneys have been extended so they can now represent clients in all intellectual property cases, not only those concerning industrial property.
Intellectual property cases will now be heard before regional courts in the first instance, with the Regional Court in Warsaw having exclusive jurisdiction over cases concerning computer software, inventions, utility models, topography of integrated circuits, plant varieties and secrets of a technical nature.
The act also makes it possible to appoint certain regional courts and courts of appeal to deal with intellectual property cases arising from the territorial jurisdiction of various other courts. To this end, there are plans to establish a specialist department in four regional courts (Warsaw, Gdańsk, Katowice and Poznan) and in two courts of appeal (Katowice, Warsaw), although the implementing regulation for this has not yet been issued.
Court's discretion in deciding on the value of the awarded amount
The courts have also been given the opportunity to assess, at their own discretion, the amount awarded to the claimant where it is impossible, difficult or impractical to substantiate the amount of the claim for an infringement of intellectual property rights. This provision is similar to the current Article 322 of the Code of Civil Procedure, which granted the court a similar right in certain cases.
The new act also introduces the unification of procedures for securing evidence and disclosing information, which until now were regulated separately for each type of case in the relevant acts.
The new act introduces special rules on securing evidence, which will now be possible both before commencing proceedings and during the proceedings until the case is closed at first instance.
If an injunction is granted prior to commencing proceedings, the court will set a deadline of two weeks to one month in which a statement of claim must subsequently be filed or the injunction will be lifted.
A motion to this effect should be examined at a closed session within a week (which used to be three days in intellectual property cases and seven days in industrial property cases), and the measure may be granted if the claim and the legal interest in granting it is substantiated, i.e. it is shown that not granting it would prevent or seriously hinder important facts being proved, or the objectives of evidential proceedings being achieved.
The way in which evidence is secured, accessed and handled has been clarified. The injunction itself may consist in having the bailiff collect goods, materials, tools and documents, or for detailed descriptions of objects be drawn up in a report by the bailiff. In its decision on granting the injunction, the Court should also specify the scope of access to evidence and detailed rules on how it can be used. In particular, the Court may prohibit the party seeking the injunction from recording any of the evidence collected by the bailiff. In the event of an appeal in which the defendant or the obliged party invokes a business secret, the decision of the court of first instance may also be altered by applying additional limitations and special rules of accessing and using the evidence, different from those that might be applied to evidence not covered by a business secret
The decision to secure evidence under an injunction is served on the defendant and obliged party upon its enforcement. The party seeking the injunction does not take part in the enforcement of the decision, as it cannot have access to the evidence unless the injunction becomes final and binding (the decision may be appealed before the court of second instance, to be examined within one month of receipt). Instead, the bailiff collects or describes the requested objects and draws up a report to be submitted to the court. The report and the objects are not included in the case files until the injunction becomes final and binding.
Disclosing or releasing evidence
The new law also introduces another way of obtaining relevant evidence in intellectual property cases. This is a request to the court to order the defendant or a third party to release or disclose evidence. The request may be submitted by the claimant as long as the claim is substantiated, and may in particular refer to banking, financial and commercial documents. The request should substantiate that the party obliged is in possession of the requested evidence. In its decision on the release of evidence, as with a decision on securing evidence, the court determines the manner in which the evidence is to be disclosed or released, as well as the rules concerning its use.
If it is demonstrated that the evidence was destroyed to prevent the enforcement of the decision, or the decision was otherwise frustrated through evasion, the court may regard as established the facts that were to be established by the evidence, unless the defendant can prove otherwise. Furthermore, the court can order the defendant to pay the costs of the proceedings, regardless of the outcome of the case.
Request for information
The amended law also unifies the provisions on requests for information, which has so far been regulated both in the Industrial Property Law and in the Act on Copyright and Neighbouring Rights as a result of the implementation of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
This claim enables right holders, both before the initiation of proceedings and in the course of a dispute, to obtain information on the origin and distribution networks of the goods or services, provided that they can credibly demonstrate circumstances substantiating the occurrence of an infringement.
Information may be requested from the infringing party, as well as from other entities that:
- are in possession, on a commercial scale, of goods whose design, manufacture or marketing has violated an intellectual property right or whose aesthetic or functional features infringe these rights;
- supply goods to a person who infringes intellectual property rights,
- provide, on a commercial scale, services that are in breach of intellectual property rights, or
- have been designated by one of the above entities as the manufacturer or an entity placing the goods on the market, or the recipient of services, or an entity providing them.
The scope of the information that may be requested is limited and mainly concerns data of the operators in the chain involved in the distribution of the goods, and the goods themselves, though it is not a closed catalogue and may be extended in particularly justified circumstances.
The information is provided under the threat of criminal liability for making a false statement.
The information must be provided on paper or in electronic form, and, at the request of the right holder, the court may set up a meeting in camera at which oral explanations to the information previously provided in writing will also be given.
The amended law also introduces an obligation, already in existence in the Industrial Property Law, to remedy any damage caused by the enforcement of a decision to provide information in cases where the proceedings in which the information was meant to be used is not subsequently initiated, or where the relevant statement of claim is withdrawn, returned or rejected, or the action or application is dismissed, or the proceedings are discontinued. A claim for damages expires if it is not pursued within one year from the date on which it arises.
In addition, the amended provisions also provide for the right to claim damages if the information is used for purposes other than the pursuit of the claimant's claim.
Counterclaim to invalidate or establish the expiry of a right
The amended legislation makes it possible to bring a counterclaim to invalidate or declare the expiry of the protection right to a trademark or right under registration of an industrial design, in proceedings before a court competent for intellectual property cases. Until now (except for EU trademarks and industrial designs), this possibility could only be carried out by the Patent Office.
The possibility of bringing a counterclaim in cases of a trademark or design infringement is limited to situations where the counterclaim includes a request to invalidate or declare the end of the protection right to a trademark, or includes a request to invalidate the registered right of protection to the industrial design concerned by the main action.
However, the Patent Office still has precedence in such proceedings – if proceedings are already pending, the court will suspend the intellectual property proceedings until the former are completed. A ruling that invalidates or declares the end of a right is effective against third parties and constitutes the basis for an appropriate entry in the relevant register kept by the Patent Office.
Action to establish the absence of an infringement
Another specific type of action introduced by the amended provisions is an action to establish that the undertaken or intended actions do not constitute an infringement of a patent, a supplementary protection certificate, a registered trademark or registered industrial design. The amended law introduces a closed catalogue of situations in which the claimant has a legal interest in establishing that it is not infringing a right, the existence of which generally determines the possibility of pursuing a declaratory judgement through civil proceedings before Polish courts. There are two situations involving the existence of a legal interest, namely:
- where the acts covered by the action are considered by the defendant to infringe a patent, supplementary protection right, a right of protection or a right under registration, or
- where the defendant has failed to confirm, in writing, within a deadline of at least two months from the date of being served a written request to do so, that the acts covered by the claim do not constitute an infringement of a patent, a supplementary protection right or a right of protection or a right under registration, and the claimant has precisely indicated the intended acts and the extent to which the infringement may occur, and has requested the right holder to confirm that these acts do not constitute an infringement.