On 16 October 2019 the Polish Parliament adopted some amendments to the Polish Act – Industrial Property Law (the “Bill”). The amendments concern many different aspects, nevertheless, here please let me concentrate on the amendments referring to civil measures to be applied in case of intellectual property rights (IPR) infringement. The Bill provides for some significant changes with regard to preserving of evidence and requesting of information.
Both measures were introduced into the Polish system in 2007 as a result of the implementation of the Art. 7 and Art. 8 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 (the “Directive”).
Preserving of evidence and requesting of information – present situation
So far both measures have been regulated jointly. In the present situation the Polish law provides for that the IP rights holder, whose IP rights have been infringed, also before a suit is brought to the court, could apply to the competent court for:
- securing the evidence,
- securing the claims by obligating the infringer to provide information, as necessary in enforcing the claims prescribed by the law (e.g. claims for prohibition of infringing acts, claims for damages) on the origin and distribution networks of the goods or services which infringe the IP rights where the likelihood of infringement of these rights is great.
By 10 December 2018 IP rights holder could also apply for securing the claims by obligating a party other than the infringer (a third party) to provide information in specific situations. However, in the decision of 6 December 2018 (SK 19/16) the Constitutional Court in Poland stated that this possibility was in contradiction with the Polish Constitution, therefore it was removed from the legal system.
The Bill provides for the separate regulation regarding the preserving of evidence and the requesting of information. According to the justification of the Bill it is a consequence of the fact that they are different measures. The aim of the claim for preserving evidence is to present, to obtain and to keep pieces of evidence, which are important for determining the infringement. The claim for information should allow to obtain information about the origin and distribution networks of the goods or services, other parties involved in the infringement in order to define a scale of the infringement.
Request for preserving of evidence
The premise of preserving evidence by the court, also before the suit is brought, is to show the likelihood of infringement of these rights is great. Such a condition is not mentioned in the present law, albeit the Directive states that evidence may be preserved “on application by a party who has presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed”. So far the civil procedure has been applying and in the motion for preserving evidence it is necessary to show that there is a concern that conducting of such a piece of evidence later will be impossible or difficult or there is such a need to do that due to other reasons.
Additionally, following the Directive, the Bill includes an exemples of how evidence may be preserved, particularly through seizure of infringing goods, materials or implements used in the production and/or distribution of these goods and the documents relating thereto. Such a measure may also include the detailed description.
Other conditions of the preserving of evidence remains the same. Namely, during such a proceeding the court shall assure the protection of confidential information. The decision on preserving evidence issued before the suit is brought to the court shall collapse if IPR holder (applicant in such a proceedings) does not file such a suit within a deadline specified by the court. The preserving of evidence thus is linked to the case for the IPR infringement.
Request for information
In the present legal situation when the IPR holder, whose rights have been infringed, moves to the court for obligating the infringer to provide information, he/she has to show that the likelihood of infringement of these rights is great. Instead of that the Bill uses the expression “if (IPR holder) proves credible circumstances indicating that the IPR has been infringed”. It is difficult to state reasons of changing the wording, the justification of the Bill does not mention them. It seems however, it will not have significant meaning in practice.
The Bill restores the possibility of requesting information from a third party (excluding consumers acting in good faith), if
- that party was found in a possession of the goods which infringe the patent, supplementary protection right, right of protection or right in registration, or
- that party was found to make use of the services which infringe the patent, supplementary protection right, right of protection or right in registration, or
- that party was found to provide services used in activities which infringe the patent, supplementary protection right, right of protection or right in registration, or
- that party was indicated by a person referred to in bullets above as being involved in the production, manufacture or distribution of the goods or the provision of the services which infringe the patent, supplementary protection right, right of protection or right in registration, and the above activities are intended to directly or indirectly gain profit or other economic benefits.
Restoring the possibility of requesting the information from third parties, at the same time the Bill provides for new provisions, which comply with the decision of the Constitutional Court of 6 December 2018 (SK 19/16) assuring that the request for information is filed in the context of proceedings concerning an infringement of an intellectual property right.
The claim for information is strongly linked with a claim for IPR infringement. Therefore, the IPR holder is obliged to bring a suit to the court within a deadline specified by the court. The consequence of failure of filing the suit is that a person, who has provided information, may claim for damages. Such a claim for damages is also provided, if the suit is withdrawn, dismissed or closed. Further, if obtained information is not used for pursuing claims, a person, who has provided information will also have a right to claim damages.
The above restrictions will cause that IPR holders will use the above measures, in particular the claim for information, more cautiously. At that moment they are used very often and obtaining information is not often followed by bringing a suit on this base.
As present, the information, which could be requested, are limited and could exclusively comprise:
- the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services which infringe the patent, supplementary protection right, right of protection or right in registration, as well as the intended wholesalers or retailers of the goods or services,
- information on the quantities of the produced, manufactured, delivered, received or ordered goods or services which infringe the patent, supplementary protection right, right of protection or right in registration, as well as the price obtained for the goods or services in question.
The Bill is waiting for to be signed by the President of Republic of Poland. When it is signed, it will be officially published in the Journal of Laws of the Republic of Poland and it will enter into force after 3 months from the publication.