Poland is a signatory to all of the major international agreements on IP protection, including the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights. As an EU member state, Poland is also part of the Community trademark and design systems and is required to harmonise its national IP laws with the relevant EU directives.
The following national legislation applies to counterfeiting in Poland:
- the Industrial Property Law 2000, as amended by the Act of May 9 2007 (with regard to civil enforcement) and the Act of June 29 2007 (with regard to criminal prosecution);
- the Penal Code and the Code of Criminal Proceedings;
- the Civil Code and the Code of Civil Proceedings; and
- the Regulation of the Minister of Finance on the Destruction and Forfeiture of Goods (as amended on July 27 2006, further amendment pending).
In addition, the following acts can apply in cases of counterfeiting or piracy:
- the Act on Combating Unfair Competition 1993;
- the Copyright and Neighbouring Rights Law 1994; and
- the Pharmaceutical Law 2001.
Poland has had an effective system of customs protection against shipments of counterfeit goods in place for a number of years. Successful cooperation between rights holders, their representatives and Customs has made it possible to limit the flow of fake goods into Poland. As of January 1 2014 this system operates, as in other EU member states, on the basis of the new EU Customs Regulation (608/2013).
The new regulation is based on the same principles as are set out in the previous EU Customs Regulation (1383/2003); however, it also provides rights holders with some new tools. In particular, under the new regulation the simplified procedure, which enables Customs to destroy suspected goods without the need to determine in separate proceedings whether IP rights have actually been infringed, is treated as a primary way of handling customs detention matters. Thus, when certain conditions specified in the new regulation are met, the simplified procedure must be applied by national Customs (it is no longer optional for member states).
In Poland, the Regulation of the Minister of Finance on the Destruction and Forfeiture of Goods, introduced under EU Regulation 1383/2003, continues to apply to simplified procedure cases and requires that a separate application for official approval of the destruction be submitted, together with explicit written agreement to such destruction from the declarant or holder of the goods. Consequently, the concept of implied agreement to destruction (where the declarant or holder of the goods remains silent), which is clearly permissible under EU Regulation 608/2013, is not accepted by Polish Customs. The difficulties involved in obtaining such written agreement within the stipulated timeframe, as well as the need to comply with numerous formalities, including compulsory arrangements with certified destruction companies, mean that attempts to apply the simplified procedure are not always successful. However, it is increasingly perceived as the quickest and most efficient way to ensure the destruction of infringing goods.
If there is no way to apply the simplified procedure, a rights holder must initiate, within the timeframes set out in the EU regulation, the appropriate legal proceedings (criminal, civil or both) to determine whether IP rights have been infringed.
Regulation 608/2013 also introduced a special procedure for the destruction of goods in small consignments. As a rule, that procedure can be applied without the involvement of the rights holder and thus is at Customs’ own risk. As a result, it is still doubtful whether Polish Customs will use it. Further, rights holders can choose to request that procedure when filing a general application for customs action, although so far few have done so.
In Poland, criminal prosecution is frequently used and is a relatively effective way of fighting the trade in counterfeit goods. Despite some faults, it allows illegally marked products to be forfeited and can be used to impose penalties on infringers without much effort or expense on the part of rights holders.
The Industrial Property Law provides that anyone that marks goods with a counterfeit trademark or places goods bearing such a mark on the market is liable to a fine, restriction of freedom or imprisonment for up to two years. As a rule, crimes related to counterfeiting are prosecuted at the injured party’s request (except for the most serious cases). Following the submission of a request for prosecution, proceedings are conducted by the prosecution authorities (ie, the police or Customs and public prosecutor) ex officio. In matters of minor importance, the proceedings may be quicker if voluntary acceptance of the penalty is applied. This is a form of simplified procedure: if the infringer pleads guilty, the prosecutor may agree the penalty with the infringer and then request the court for approval thereof. Usually, the penalty includes forfeiture of the counterfeit goods. If a court forfeiture order is issued, the goods become property of the state and are destroyed – but the rights holder has no influence on this process, and is not informed about it. Certain categories of goods, such as clothing or footwear, may be donated to charity and rights holders are often asked whether they would accept such solution.
In recent years the legal grounds for the criminal prosecution of counterfeiters in Poland have been subject to numerous modifications and challenges. One of the most controversial theories is that the criminal offence of trademark counterfeiting covers only national marks (registered by the Polish Patent Office), and does not include international trademarks (registered through the World Intellectual Property Organisation) and Community trademarks (registered by the Office for Harmonisation in the Internal Market). The Madrid Agreement and Protocol and the EU Community Trademark Regulation do not regulate criminal issues, leaving them to national legislation. Further, the Industrial Property Law states that a ‘trademark’ is a mark registered by the Polish Patent Office, so it may be assumed that it does not refer to international or Community trademarks. In consequence, in line with the criminal law principle of nullum crimen sine lege certa (no crime can exist without pre-existing definite penal law), such trademarks cannot be subject of the criminal offence of counterfeiting.
However, this theory has been criticised by many IP practitioners and, more importantly, some appellate courts. They have stressed that the introductory part of the Industrial Property Law clearly provides that trademarks protected in Poland on the basis of an international treaty or EU law shall be treated as national marks. Thus, the anti-counterfeiting regulations must apply to any trademark protected in Poland, regardless of the registration regime (ie, national, international or EU). The discussion is still ongoing and occasionally this theory is employed by the criminal courts. Due to the uncertainty this raises for IP enforcement, it is wise to maintain a Polish national trademark registration even if there is a parallel Community trademark or international registration in place.
Civil law remedies are used to fight counterfeiters in serious cases involving large-scale infringement. However, certain legal issues, numerous formalities and the length of proceedings still discourage many rights holders from using these remedies to enforce their rights. Poland has no specialist IP courts other than the Community Trademark and Design Court in Warsaw. An initiative to establish a specialist court system is pending, although its final outcome is uncertain.
Amendments implementing the EU IP Rights Enforcement Directive (2004/48/EC) into Polish law were adopted on May 9 2007. They introduced substantial changes to the Industrial Property Law and other IP laws. Unfortunately, some of the amendments offer divergent protection depending on the type of IP right involved: copyrights, database rights and plant variety rights on the one hand, and industrial property rights (ie, patents, trademarks and designs) on the other. Further, the amendments introduced a number of changes that, paradoxically, reduced the level of protection for industrial property rights by removing some existing remedies. For example, the previous right to demand that the infringer issue an appropriate announcement in the press was limited to making the court verdict public, either in full or in part. Further, in contrast to copyright holders, trademark owners may request relief from the effects of infringement only through the recall, removal or destruction of infringing goods, and such options apply exclusively to goods that are the property of the infringer. In the case of goods bearing a counterfeit trademark, when deciding on their further disposal the court may deem removal of the trademark sufficient to put the goods into circulation only in exceptional cases.
Other remedies available to rights holders under the Industrial Property Law include:
- an injunction prohibiting continuation of the infringement;
- an order to recover unlawfully obtained profits; and
- an order to pay damages (in cases of wilful infringement).
These provisions make it possible for rights holders to seek financial compensation not only based on the Civil Code’s general principles, but also by way of a cash sum corresponding to the licence fee or other appropriate remuneration that would have been due if the infringer had requested authorisation to use the trademark.
The right of information (within the meaning of the IP Rights Enforcement Directive) was introduced into the Industrial Property Law as a separate claim. The court may order an infringer or even a third party to disclose certain information that is vital to the main claim, such as information relating to the origin and distribution networks of infringing goods, the names and addresses of manufacturers and suppliers, the amounts of goods manufactured and sold and the respective prices.
With regard to the availability of provisional and precautionary measures, the general rules of the Code of Civil Proceedings for measures for securing all types of claim apply in cases of trademark infringement. A motion for a preliminary injunction may be brought before filing or together with the statement of claims. In such motion, the applicant can seek measures to secure claims available for trademark infringement, in particular the claim to cease infringement. The applicant must indicate the measure of securing claims and specify the circumstances that justify the motion. As a rule, the applicant is entitled to choose the measure of securing claims that provides a sufficient level of protection, yet does not place an unjustified burden on the defendant. In particular, the applicant can seek to prohibit the defendant from producing, introducing onto the market, offering, importing or storing the infringing goods for the duration of the main proceedings. A sensitive point that sometimes justifies court refusal of a preliminary injunction is the rule that, with some exceptions, grant of such injunction cannot lead to satisfaction of the claims being secured. The applicant must show the probability of claims being secured and its legal interest in obtaining a preliminary injunction. In particular, it is important to indicate that lack of security would prevent or seriously hinder the implementation of a judgment issued in the main proceedings. The required level of substantiation of claims in preliminary proceedings is lower than that in the main action. In a preliminary injunction motion, it is not necessary to prove infringement, but only to demonstrate its likelihood. However, if a preliminary injunction is granted, the statement of claims must be filed within two weeks; otherwise, the preliminary injunction lapses. This means that the rights holder must be ready with the statement of claims and all evidence before the preliminary injunction motion is filed.
As in other countries, in Poland the Internet has created numerous dangers and threats, in addition to its obvious advantages. Along with the rise in popularity of online shopping and auction sites, trade in counterfeit goods has also flourished. To date, Polish law has not addressed this problem directly and there have been no significant court decisions on the issue. Although there is no doubt that a person selling counterfeit goods through an internet auction site commits a crime under the Industrial Property Law and should be subject to criminal liability, it is hard to impose such liability on portal administrators. Although the Act on Providing Electronic Services imposes certain obligations on service providers which learn that a portal user is using the service in an illegal manner, it explicitly exempts service providers from liability if they do not have such information.
However, service providers are aware of the importance of the problem and its negative impact on their services, and the guidelines stemming from recent European Court of Justice decisions (L’Oréal v eBay, C 324/09 and Louis Vuitton v Google, C-236/08 to C-238/08). Most of them outline in their terms and conditions the types of goods that cannot be sold or advertised – usually including counterfeit goods. Nevertheless, on their own administrators are often unable to verify the nature of the goods offered by users. In case of auction sites, service providers regularly block offers involving suspected infringing goods on written or electronic notification from rights holders. Providers tend to take prompt action and, if the user continues to offer counterfeit products in spite of earlier warnings, the account may be locked. However, this system has some disadvantages. Notifications must mention the specific user and the offer on a case-by-case basis, and include an explanation of why the offered product is counterfeit (the mere low price of the product is not regarded as sufficient evidence). Moreover, even when an account is locked, the wrongdoer can re-register with the site under another user name and continue the activity. Service providers have introduced various IP protection programmes, which usually allow rights holders to post information on their rights and a warning to potential infringers that they may be held liable. However, such mechanisms do not result in the automatic blocking of infringing offers and the rights holder’s active participation is still required.
Rights holders should monitor auction sites and, if they spot a suspicious item, make a test purchase. If a user conducts activity on a large scale, a private investigation is also recommended. Such sellers are frequently the last link in the sales chain and an investigation may allow the rights holder to trace the source of illegal goods. In addition, the prosecution authorities occasionally monitor auction sites on their own initiative. If they are suspicious of goods, they can inform the rights holder, which will then decide on possible legal action.
Illegal online pharmacies are also a significant problem. The Pharmaceutical Law strictly governs the activity of pharmacies and the trade in medicinal products. A pharmacy may be run only by persons with pharmaceutical degrees. Further, the mail order sale of prescription drugs is prohibited. Nevertheless, numerous websites offer a wide range of medicines. Such illegal online pharmacies often offer counterfeit pharmaceuticals (eg, lifestyle drugs or hormonal preparations). Where public health is in danger, action against fake pharmacies is taken under the Pharmaceutical Law rather than by using anti-counterfeiting measures, and is pursued by the authorities ex officio.
In order to prevent the influx of counterfeit goods onto the Polish market and tackle ongoing counterfeiting, the following actions may be taken.
Establishing a representative in Poland
Typically, a rights holder’s representative will be an IP law or trademark attorney firm that is capable of handling anti-counterfeiting matters. However, it could also be a Polish subsidiary or an official distributor, preferably working in cooperation with a local attorney. A representative can take prompt and appropriate action in relation to any suspected counterfeiting. In addition, activities conducted by the authorities (eg, the police or Customs) are more decisive if quick contact with the rights holder or its representative is possible.
Customs surveillance under EU Customs Regulation
Rights holders are encouraged to file a general application for customs action within the meaning of the EU Customs Regulation. The application may apply only to Poland (national surveillance) or, if the applicant owns a Community trademark or design, to selected or all EU member states (EU surveillance). The materials submitted alongside the application for action should contain as much information as possible to allow Customs to identify counterfeit goods. In case of EU surveillance, it is recommended that local contacts be appointed (at least for administrative purposes) in Poland.
Organising regular meetings and training
Rights holders should inform Customs of new product lines, collections and changes to distribution networks or places of manufacture. To this end, training for and meeting with customs officers and other authorities are recommended. Such training and meetings may be agreed individually with particular customs offices, or rights holders may attend central training or meetings organised by Customs.
Monitoring and cooperation
Before taking final action, a test purchase or a private investigation to determine the source of the goods is recommended. Rights holders should also establish ongoing cooperation with online auction sites, among others, as part of their rights protection programmes. Lastly, rights holders should cooperate with brand promotion and IP protection organisations, and participate in campaigns promoting IP awareness among consumers.
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.