Remodelling the right to information under Polish law

IN-DEPTH ANALYSIS

As part of the new law which came into effect on 1 July 2020 introducing courts specialising solely in intellectual property matters, Polish law also underwent other changes relevant to enforcement of IP rights. One such change is to the right to information under Article 8 of the Enforcement Directive, which aims to overhaul a process that was widely criticised, with its practical application by right holders and the courts proving particularly controversial.

How does the new law improve things for right holders?

Access to exact and exhaustive information on the scale and extent of an infringement is indispensable in order to effectively enforce any IP right – especially trade mark rights. The amended law is expected to make it easier for right holders to obtain this information. improving the position of those who face IP infringements in Poland.

Under the new law, the right to information will be granted if the trade mark holder can reliably present circumstances which demonstrate the infringement. The information sought by the trade mark holder can include information on the origin and distribution networks of the goods or services, provided that it's indispensable to pursue the trade mark holder's claim.

Additionally, the formal request must:

specify which information is requested
identify the obliged individual/entity
substantiate the circumstances which they believe indicate that the relevant individual/entity is in possession of the requested information.

What information can trade mark holders request?

The specific information categories are also defined differently now; trade mark holders can request information on:

the entity, place of residence or registered office and address of producers, manufacturers, distributors, suppliers and other previous holders from or for whom the goods were acquired or disposed of, used or provided
the anticipated wholesalers and retailers of those goods or services
the quantities of goods or services produced, manufactured, dispatched, received or ordered
the prices received in exchange for the goods or services.

More importantly, in justified circumstances, the trade mark holder can also request other information which is indispensable for establishing the amount of the claim. This clearly confirms that the request for information is open-ended, offering more flexibility regarding what can be requested from the infringers or individuals/entities involved in the infringement.

The new legalisation also specifies the information which may be requested from the banks, such as details of the account holder and details of the monies in an account which relate to the activities which infringe intellectual property rights.

Other relevant practical differences

There is even stronger pressure on the inter partes character of the relevant proceedings, as the request of the trade mark holder should be decided upon once the other party has had an opportunity to present their position. A copy of the trade mark holder's request is sent by the court to the obliged individual/entity who has at least two weeks to respond.
The new law clearly states that the right to information may be granted in the course of ongoing court proceedings, or alternatively, prior to starting court actions. In the latter case, the relevant court proceedings should be commenced no later than one month after the relevant information was provided under the court order. This was one of the highly controversial issues in practice before the law was changed. Some academics even argued that the courts should refuse granting the right to information prior to court proceedings.
Potential failure to provide true or accurate information could risk criminal liability. Upon receiving the court decision, the obliged person should be advised of the criminal liability involved with making a false statement.
The new legislation clearly acknowledges the need to protect business secrets– when granting the request the court should specify when the requested information should be provided, its type and scope, as well as the rules under which the trade mark holder may make use of it. These rules may be changed by the court, as well as a result of an appeal against the court decision.
Upon the request of the trade mark holder, the court may schedule a court session behind closed doors to orally clarify the information provided.
In the event the trade mark holder who received the information does not commence court proceedings within the time limits set by the court, the court proceedings are discontinued because of reasons related to the trade mark holder, or the trade mark holder loses the dispute (ie its claims are rejected on the merits), the obliged individual/entity will be entitled to damages suffered as a result of complying with the court decision and providing the requested information. The same applies in situations where the trade mark holder uses the provided information for reasons other than to pursue the claims resulting from the infringement.

A step in the right direction for Polish law

The new law is a good response to the justified criticism of the legal regulations which were in place before 1 July 2020. Indeed, it's definitely a step in the right direction which will make enforcement of trade mark infringement claims in Poland much easier and more effective.

However, its application in practice may give rise to other issues, such as the question of whether the right holder should be obliged to start the court action in every case where the request for information was granted.

It's possible that the provided information will demonstrate that there actually is no infringement (eg permissible parallel import) or its scale is so limited that starting court proceedings is not commercially practical. Let's hope that the specialised IP courts will be more efficient with dealing with these issues and that they will be soon be resolved by case law.