Allen & Overy, A. Pędzich sp. k. - Poland
The current procedural system in Poland does not favour institutional specialisation in matters relating to intellectual property. Infringement cases are reviewed by commercial departments of the common courts and the Supreme Court. Complaints about the decisions of the Polish Patent Office, specifically on the granting of exclusive rights, are reviewed by the administrative courts and the Supreme Administrative Court. Matters relating to EU trademarks and Community designs are the only exception, as these are reviewed exclusively by the specialised department of the Regional Court in Warsaw.
However, the amendment of 13 February 2020 sets out to change this by creating a procedure that focuses on specialisation, which in turn aims for the faster resolution of cases.
The amendment introduces a new type of proceeding into the Polish Civil Procedure, reserved exclusively for cases that relate to intellectual property. This article provides an overview of three key aspects of the new procedure.
Scope of IP cases and court venue
The IP cases that will be reviewed under the new procedure are defined as cases that concern the protection of:
- copyrights and related rights;
- industrial property rights; and
- other intangible property rights.
Beyond that, they also include cases concerning:
- the prevention and combating of unfair competition;
- the protection of personal rights to the extent of using these rights for the purposes of individualisation, advertising or the promotion of the entrepreneur, goods or services; and
- the protection of personal rights relating to scientific or inventive activities.
Such a general scope may create problems on deciding whether the given case fits the profile. However, the rationale is that the current jurisprudence will still serve as the guideline for interpretation and, in any case, the IP courts will be the most competent authority to resolve any remaining doubts.
IP cases will be reviewed by four specialised departments of the regional courts (Warsaw, Gdańsk, Lublin and Poznań) at first instance and two departments of the courts of appeal (Warsaw and Poznań) at second instance. In principle, the IP courts will be equally competent to review all of the above IP cases, with the exception of cases concerning:
- computer programs;
- utility models;
- topographies of integrated circuits;
- plant varieties; and
- technical secrets of an enterprise.
These will be reserved for the Regional Court in Warsaw, which has been appointed a technical court, competent to review those cases that have the highest degree of technical complexity.
The new procedure provides for a package of three types of discovery claim, which are a mixture of new and existing solutions. These serve the purpose of discovering the circumstances surrounding the infringement of IP rights (extraction purpose) and securing certain materials for the purposes of producing the evidence in the related infringement litigation (conservative purpose). Although similar, these measures differ in scope and applicability to accommodate the variety of IP cases:
- Securing the means of evidence – this measure can be applied against the defendant or any third party that might enable the securing of the means of evidence. The aim of this is to physically preserve certain materials that will allow for producing evidence in the future IP litigation. The claimant is not required to explicitly indicate the facts that are meant to be proven, as this measure is designed to gather facts about the scope of the infringement; therefore, the claimant is unlikely to be aware of specific circumstances. For these reasons, it should not be confused with securing the evidence, which is already provided for by the Polish Civil Procedure.
- Disclosure or issuing the means of evidence – the aim here is to extract the means of evidence that is at the defendant’s disposal, particularly banking, financial or commercial documents. Compared to the first measure, this requires a greater level of specificity from the claimant in terms of indicating what is actually requested and demonstrating that it is indeed in the possession of the defendant.
- Request for information – this is the most specific of the three measures as the scope of information that may be requested is limited to data on the origin and distribution networks of goods or services, if obtaining them is necessary to pursue an IP-related claims. This measure can be applied against the defendant or any third party that may possess or have access to such information.
IP-specific counterclaim and declaratory claim
The amendment also provides for two types of IP-specific claim. The first applies in infringement cases regarding trademarks and industrial designs and provides the possibility for a counterclaim based on the invalidity or expiry of the relevant exclusive right. This possibility is then limited by the type of infringed exclusive right. and will not be possible, for example, in patent infringement disputes. Such cases were previously only reviewed by the Polish Patent Office and this will remain the case as an alternative to the abovementioned counterclaim in infringement cases. To avoid re-examining the same case, the amendment also provides conflict rules between the IP courts and the Polish Patent Office.
The second type of IP-specific case is a declaratory claim that aims to confirm that certain actions that have already been taken or will be taken by the claimant do not constitute infringement of the industrial property rights. This serves as a protection against investments that may turn out to be unprofitable if they cannot be executed due to existing IP rights. The declaratory claim must be preceded by communication between the claimant and the exclusive rights holder, in which the potentially infringing actions are discussed.
The amendment is due to take effect on 1 July 2020 but will not affect ongoing first or second-instance proceedings. The rationale behind choosing this date was that it would be sufficient to adapt the court structure and train personnel. However, the outbreak of the covid‑19 pandemic has likely thwarted this plan, so it is possible that the launch date will change.