Poland: Will There Finally Be Separate Courts For Intellectual Property?

Last Updated: 8 May 2019
Article by Michał Resmer

On 4 April 2019 the Minister of Justice submitted a draft bill to amend the Code of Civil Procedure and other acts (No. UD 497 from the list of legislative works of the Council of Ministers) for public consultation and solicitation of opinions from relevant institutions.

The proposed changes are aimed at including proceedings related to the infringement of intellectual property rights in a separate regulation, which will be applied by specialist courts at the regional level. At the same time, new or modified procedural mechanisms facilitating the protection of rights and market position are to be made available to individuals seeking to assert their rights, as well as to entities unsure as to the legality of their actions. The final piece of the jigsaw in the proposed amendment is that it professionalizes the activities of both parties in a case by imposing an obligation on them to be represented by professional representatives, i.e. advocates, legal advisers and patent attorneys.

Intellectual property to be distinguished in courts 

The draft bill aims to introduce a new, distinct procedure for intellectual property cases into the Civil Procedure Code. In addition to cases concerning copyright, inventions or trademark protection, it is proposed that intellectual property cases will also include the prevention and combating of unfair competition and the protection of personal rights, for example if it concerns using someone's image for advertising purposes or in connection with scientific or rationalization activities. 

Defining intellectual property cases in such a way should be assessed positively. This corresponds to the hitherto practice of participants in disputes and adjudicating courts successfully finding legal grounds for claims and protection in various regulations, including the Act on Copyright and Related Rights, the Act on Combating Unfair Competition and industrial property law regulations. 

Obtaining evidence in a case

The proposed amendment also includes a series of tools that will be available to claimants seeking to assert their rights. First of all, the legislation will provide them with a request to secure evidence, the purpose of which is to provide the claimant or the entity considering filing a claim with a way of obtaining information about facts concerning infringements of their rights. Since it is the infringer who has the broadest knowledge, for example, as to the quantity of goods or services introduced to the market, it will be beneficial to have a means of obtaining such information from that source. It should be noted that the bill does not limit the opportunity to secure evidence only from the defendant or future defendant, since it indicates that anyone who has control over the means of evidence or who may be able to secure it also has an obligation to comply with such a request. Thus, the plaintiff will be able to direct their efforts to obtain the information necessary to resolve the case at any of the defendant's partners, suppliers or customers. As in the case of traditional security of evidence, the court will issue a decision without delivering a copy of the application to the, in order that the infringer is not forewarned of the action and the element of surprise is maintained. 

The execution of even a provisional decision to grant the right to secure evidence shall be the responsibility of bailiffs, who shall submit the materials collected from the defendant to the court. Such materials will not be included in the files of the proceedings, and the rules of familiarization with them and their reproduction will be determined by the court when the application for protection is taken into account.

One procedural measure available only to the claimant is a request for disclosure or issuance of the means of proof. This is another tool that allows the claimant to obtain relevant evidence from a defendant that cannot be obtained legally outside of court proceedings. The draft bill stipulates that the request for disclosure or the issuance of evidence itself has to meet certain requirements, including the designation of the evidence requested by the claimant. In its justification, the authors of the draft stipulated that this does not oblige the claimant to specify the measure in detail by indicating a specific name or, for example, invoice numbers or their location, but only that "some determination" of the evidence requested "within reason" must be made. In the case of infringements committed on a commercial scale, bank, financial or commercial documents may also be disclosed or issued. The subject matter of the security will determine which authority, court or bailiff will execute the decision. 

The information injunction mechanism, which already exists in copyright and industrial property law, is to supplement the triumvirate of tools afforded to those seeking to protect their rights. According to the proposed Article 479,11 it is necessary to include information on the respondent's cooperating parties and the quantity and prices of counterfeit products on the request.

The concept of granting the claimant such a broad range of measures to enable them to establish and present evidence of an infringement before the courts should be viewed in a positive light. However, how effective they prove to be will, above all, be determined by the efficiency of the courts in making decisions and the enforcement bodies as they seek to implement them against the obligated parties. The path taken by the judiciary when considering obliged parties' complaints on the grounds of a need to protect business secrets will also be extremely important.

The courts will deal with trademarks and industrial designs

In order to ensure equilibrium, the proposed amendment will give the courts ruling on industrial property cases the jurisdiction, as part a counter-claim, to hear arguments concerning the invalidation or revocation of a trademark right or invalidation of a registered industrial design in relation to the claims of the original claimant. Against this background, the amendment obliges the court hearing the case to cooperate with the Polish Patent Office in order to avoid duplication of proceedings. The very concept of considering the issue of revocation or invalidation of rights in civil proceedings should be considered a step towards disputes reaching a quicker conclusion. 

Infringement or not?

The mechanism protecting the legal position of entrepreneurs will include a special procedure aimed at determining whether specific actions taken or intended to be taken constitute a breach of a given patent, protection right or design right. At the same time, the draft act clearly defines the conditions under which entities will be considered to have a legal interest in bringing such a suit. Prior to instituting a legal action in the event of inactivity on the part of the rights holder in question, it will be necessary to send them a letter requesting them to confirm that certain activities do not constitute an infringement. The obligation to wait up to one month from the date of delivery of the letter to the entitled person until the moment of filing the claim remains a matter of discussion. In the context of the free market, a month may be considered to be far too long. 

As I noted in the introduction, the proposed amendment to the Civil Procedure Code is aimed at professionalizing intellectual property proceedings. This is a good idea, because judges with the appropriate qualifications and knowledge will be able to move faster when undertaking a substantive examination of a case. It is hoped that the courts appointed to adjudicate on intellectual property cases will be sufficiently staffed, because even the best legal mechanisms prove to be useless for participants of business transactions and rights holders if proceedings are excessively lengthy and the ordered protective measures are not enforced effectively.  

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions