Polish Constitutional Tribunal says claim for information in trade mark disputes is not constitutional

The Polish Constitutional Tribunal issued a long-awaited judgment in December 2018 regarding a claim for information under the Polish Industrial Property Act (case no. SK 19/16).

The Polish Constitutional Court ruled that a trade mark owner cannot require an auction portal to disclose information about entities selling goods and about the quantity and prices paid for these goods, as this claim is inconsistent with the Constitution.

Legal issue at stake

A claim for information is only partially codified in the Polish Industrial Property Act. The Polish Industrial Property Act grants the party whose rights have been infringed the right to certain information: over the origin and the distribution channels of the goods infringing the trademark.

This includes purchase and sale prices and sales outlet and has been in force in Poland since 2007. It was supposed to have been transposed from the EU Enforcement Directive 2004/48 (effective since 1/09/2008). Since then there has been a fierce discussion among scholars on this matter.

Facts

A complaint was brought by a company which runs an auction portal, when the District Court in Warsaw (the Court of Community Trade Marks and Industrial Designs) forced it to provide information about the origin of the products bearing the trade marks in question which were offered through the portal by two users operating under pseudonyms.

The court ordered that the auction portal provide the names and addresses of the sellers, amounts offered for sale and sold by the sellers being the trade marks in question, amounts obtained from the sale of these goods in the periods from the date of registration of users to the date of providing the information.

The company which was obliged to disclose information filed a complaint. The court of appeal dismissed it.

In its further complaint to the Tribunal, the company argued that art. 286 (1) par. 1 point 3 of the Act of 30 June 2000 - Industrial Property Law, is inconsistent with the Constitution, and the source of this unconstitutional act is due to the incorrect 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.

The company argued that the national legislator, when implementing the Directive, did not balance the interests of the right holder and the non-infringing third party.

Therefore the obligations which are incumbent on third parties, including disclosure of information about entities disposing of goods as well as the quantity and prices paid for these goods, are disproportionately large and do not meet the constitutional standards of restrictions on the freedom of an economic activity.

The company stressed that by interfering with the rights in business secrets, there are no defence mechanisms against unauthorized use by the party who obtained the information. Guarantees resulting from the court proceedings were considered insufficient by the auction company.

The Tribunal upheld the company's position and held art. 286 (1) par. 1 point 3 to be non-constitutional.

Further controversy?

Even prior to the judgment the Polish rule on claim for information in intellectual property matters was heavily criticised for alleged inaccurate implementation. One may observe that the rough approach of the Polish Constitutional Tribunal, however might have opened a bag of worms.

We now observe in the Polish market that alleged infringers already use this judgment in pending trade mark actions, stating that the claim for information is completely inadmissible in Poland.

This judgment must also be viewed in light of the earlier judgments of this Tribunal regarding the hypothetical licensee fee as a basis for IP damages. Clearly the Polish Constitutional Tribunal has IP matters on its radar.

Upcoming changes?

Hopefully, there is light at the end of this long dark tunnel. The Polish Government decided to reform the Industrial Property Act. The grand debate launched in early 2018 and the proposed reform comprises of significant changes in patent, trade mark and design issues.

The aim is to remodel industrial property laws in accordance with recent judgments of the EU Court and EU legislation, as well as more effectively to balance the interests of stakeholders in the Polish market. The draft legislation states the claim for information:

• may be asserted in separate proceedings or together with the infringement action in consolidated actions
• may be brought if the claimant demonstrates the credible circumstances of trade mark infringement (or other intellectual property rights)
• may also be brought against the alleged infringer or the group of people who have used infringing services
• when asserted, due protection of trade secret must be provided.

The new Industrial Property Act is supposed to be effective as of Autumn this year and we will keep you updated.