13 juillet 2020
Brands update - July 2020 – 9 de 9 Publications
Polish lawyers have been waiting a long time for the establishment of specialist IP courts. This year will see them introduced. Infringement proceedings may take less time than at present. This is all thanks to specialisation in the justice system. On 1 July 2020, specialised IP courts started operating in Poland.
Currently, all civil IP cases – trade marks, designs, patents, copyrights, trade secrets and unfair competition claims – are heard by regular courts, except for disputes over EU trade marks and community industrial designs rights infringements. In these matters, the EU Trade Marks and Community Designs Department of the District Court in Warsaw has exclusive jurisdiction.
The structure for resolving disputes concerning national IP rights was found ineffective. Judges examining commercials matters have not had much experience in IP law. The courts have often used an expert opinion.
The reform introduces special divisions of five district courts of first instance (in Warszawa, Poznan, Gdańsk, Lublin and Katowice) and divisions of two courts of appeal of second instance (in Warsaw and Poznan). These courts will hear claims concerning the copyright and related rights, industrial property rights, unfair competition, certain trade secrets, and other rights relating to intangible assets. The Warsaw IP court will have exclusive jurisdiction over all technical matters, most importantly over patent litigation.
The new courts will also hear EU trade mark and community industrial design matters. The work carried out by the EU Trade Mark and Design Court will be now distributed among all the appointed IP courts of first instance – not only in Warsaw, but also in Gdańsk, Lublin and Poznań.
Some cases regarding the decisions of the country's Patent Office (concerning invalidity of trade marks or industrial designs) will no longer be heard by the Provincial Administrative Court in Warsaw and the Supreme Administrative Court. This will not apply to patent and utility model invalidity proceedings which, due to their technical nature, will still only be heard by the Polish Patent Office.
The reform brings important new procedures. There are specific measures aimed at securing the evidence and information needed to effectively enforce IP rights. Securing evidence, disclosing of evidence by a defendant and a request for information (not limited only to a defendant) are currently included in the Polish legal system as a result of the implementation of the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
However, how these legal measures were transposed into Polish law is subject to criticism, as they are not considered to fully reflect EU requirements. Now, the claimant needs first to show infringement before filing the motion for securing information.
The alleged infringer will have the right to file counter claims aimed at invalidating the claimant's trade mark(s) or design(s) and initiate a non-infringement declaration. The reform also regulates the cooperation between IP court and the Polish Patent Office – in particular, the exchange of information and the impact of the pending proceedings before the Polish Patent Office on court proceedings.
The reform also introduces an ability to determine that the actions taken or intended by the claimant do not constitute an infringement of a patent, an additional right of protection, a trade mark right or a design right.
On a practical note, a party in court IP proceedings has to be represented by a professional attorney-at-law. This does not apply if the dispute value does not exceed PLN 20,000 (c. EUR 5,000) and if there is no need for professional representation by an attorney based on circumstances, especially if the case is not complicated.
The introduction of IP courts is likely to result in an increased level of certainty in IP matters. Foreign business partners may be more likely to invest in Poland if it has a predictable legal system concerning one of the most crucial business assets.
Interestingly, there are some discussions to introduce an online platform for resolution of minor (in terms of the value) disputes. However, there is no official bill on this as yet. The trend in Poland is the growing importance of alternative dispute resolution of IP disputes. In 2019, the Polish Patent Office kicked-off a joint programme with the World Intellectual Property Organisation concerning trade mark mediation services provided by WIPO in the opposition proceedings in the Polish Patent Office.
par Roland Mallinson
par Timothy Pinto