Zaborski, Morysiński - Poland
The amendments to the Polish Civil Procedure Code, which enter into force on 1 July 2020, provide crucial changes to the enforcement of IP rights in Poland, including the extensive regulation of proceedings related to IP rights infringement.
Definition of ‘IP case’
The new definition of an ‘IP case’ comprises a broad scope of cases that can be brought before specialised IP courts. According to the amended bill, IP cases will cover not only copyrights and industrial property rights, but also cases that combat and prevent unfair competition, the protection of personal rights in cases relating to advertising or the promotion of goods and services, and scientific and inventive activities.
Specialised IP courts
The need to create specialised courts with field experts as judges has been raised by IP professionals for many years, due to the increasing number of cases related to intellectual property, the complexity of IP matters and the specific character of these proceedings.
IP infringement claims are currently examined before common courts and the Supreme Court, while the decisions issued in industrial property rights registration proceedings are examined by the administrative court in Warsaw. Invalidation proceedings for industrial property rights are under the jurisdiction of the Polish Patent Office (PPO) and are revised by administrative courts. Infringement cases for EU trademarks and Community designs are under the exclusive jurisdiction of the 22nd Division of the District Court in Warsaw.
Under the new law, four departments for IP matters will be created at district courts in Gdansk, Lublin, Poznan and Warsaw, as well as two specialised departments at the courts of appeal in Warsaw and Katowice.
These departments will hear disputes on:
- utility models;
- designs (including Community designs);
- trademarks (including EU trademarks);
- geographical indications;
- topographies of integrated circuits;
- unfair competition; and
- personal rights, in so far as they concern the use of personal rights for the purpose of individualising, advertising or promoting an enterprise, goods or services in connection with scientific or rationalising activities.
Moreover, the IP department at the Warsaw District Court will have exclusively competence in technical IP matters (ie, computer programs, inventions, utility models, topography of integrated circuits, plant varieties and business secrets).
Mandatory representation by professional representatives in IP matters
The amended bill has made representation of parties by professional representatives mandatory in IP cases, which will assure that a claim’s legal grounds are defined. The aim of this is to accelerate IP proceedings. However, the court has the power to release a party from this obligation in simple matters where it can stand alone.
The amended bill will introduce new regulations to secure, disclose and release evidence and request information in IP matters. However, these measures differ in the manner and scope of judicial protection provided:
- The motion to secure evidence will assure that the rights holder gains information about the infringement of its rights.
- The request to disclose or release evidence will allow the rights holder to obtain evidence from the infringer about the case requirements, which is impossible to legally obtain outside of court proceedings.
- In an information request, a rights holder can obtain information on the defendant's cooperators and the quantity and prices of counterfeit products.
Counterclaims and declaratory action
The new regulations clarify two specific types of court action: counterclaims and actions to determine that certain activities do not infringe IP rights. With regard to counterclaims, the draft is based on the EU Trademark Regulation (2017/1001). Currently, cases on trademark and design invalidation and trademark cancellation due to non-use are heard before the PPO. Following the amendments, it will be possible to bring counterclaims before the IP court. This will require cooperation between the IP courts and the PPO.
Specialised IP courts have long been sought after by IP professionals in Poland and the introduction of IP-qualified judges and representatives should help to accelerate proceedings.
Due to the length of proceedings, many cases have not reached court, which may affect the level of IP protection and the development of IP jurisdictions. Creating a specialised IP court may improve the litigation system for IP matters in Poland. The changes will certainly facilitate the effective enforcement of exclusive rights and will hopefully encourage rights holders to fight for their IP rights before the civil courts, which is important for strengthening IP protection.