Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Civil and criminal proceedings are available to enforce trademark rights against alleged infringers.

Civil proceedings are set out in the Act of 30 June 2000 (Journal of Law 2017, Item 776, as amended) (the Industrial Property Law) and the Act of 16 April 1993 on Combating Unfair Competition. The Industrial Property Law sets out cases of trademark infringement and possible claims resulting therefrom. The Act on Combating Unfair Competition defines acts of unfair competition, which include trademark infringement and the dilutive use of a mark. This act also provides possible claims.

It is possible to cumulate claims under both laws in one set of proceedings. Trademark infringement often also constitutes an act of unfair competition.

The Industrial Property Law also includes criminal provisions (involving the police, the prosecutor and the criminal courts).

Poland has no specialist courts (except for the EU trademarks and designs court in Warsaw). However, a significant legal amendment which proposes to introduce specialised IP courts in Poland has been processed by Parliament and is expected to come into force in 2020.

Procedural format and timing

What is the format of the infringement proceeding?

In civil cases, the plaintiff initiates infringement proceedings by filing a lawsuit or motion for injunction (a temporary judgment which applies until the court issues its decision). The plaintiff and the defendant can submit various types of evidence to the court. The most important type of evidence is documents, but witnesses can also be called (except in commercial cases, where witness testimonies are limited). Parties can also request for expert opinions to be admitted as evidence.

The role of experts in trademark infringement proceedings is provided for in the Civil Procedure Code. Accordingly, where special information is required, the court may, having considered the motions of the parties as to the number and selection of expert witnesses, summon one or more expert witnesses to testify.

Civil proceedings last up to two years in first instance. Thus, businesses often seek out-of-court methods of dispute resolution (eg, inter partes negotiations).

In case of infringement, IP cases are handled by one judge with a legal background.

In criminal cases, the length of proceedings depends on the actions of the police and the prosecutor, who handle a case once a motion for prosecution has been filed. Cases are often settled before going to court (eg, the rights holder and infringer reach an amicable settlement or the infringer agrees to a voluntarily penalty).

Burden of proof

What is the burden of proof to establish infringement or dilution?

As a general rule, the burden of proof rests on the party which benefits from the legal effect. It is up to plaintiffs to prove that the conditions of trademark infringement or dilution have been met.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

As a general rule, trademark owners may seek a remedy for an alleged violation. The same goes for criminal complaints.

According to the Industrial Property Law, a licensee can bring claims on its own if the licence agreement authorises it to do so. Exclusive licensees may bring claims on their own if the trademark owner is not interested in pursuing an infringement case.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

As regards border enforcement, the available measures are described in the EU Customs Enforcement of IP Rights Regulation (608/2013). Accordingly, if there is a probability that imported goods infringe a trademark registered or valid in Poland, Customs will hold the goods for a limited time and inform the owner. This gives the owner and the infringer the chance to settle the case amicably by destroying the counterfeit products. If the infringer refuses to destroy the products, the owner can initiate civil or criminal proceedings.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The Civil Procedure Code and the Industrial Property Law give trademark owners certain discovery, disclosure and preservation devices.

According to the Civil Procedure Code, evidence may be preserved on a motion before proceedings are commenced or ex officio in the course of proceedings where there are reasonable grounds to believe that the taking of such evidence will be prevented or significantly obstructed or where it is otherwise necessary to determine the current status quo.

The Industrial Property Law enables the courts to secure evidence (on a motion) in trademark infringement cases or secure claims by disclosing certain information about the infringement (eg, the amount of infringed goods introduced into the market and the distribution network).

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

On average, it takes between two and six weeks to obtain a temporary injunction, depending on the court (eg, it may take longer in Warsaw).    

First-instance proceedings take approximately two years or longer (especially if there are multiple claims or written opinions of expert witnesses). Appeals also take approximately two years (most of this time is spent waiting for the appeal hearing to be scheduled).

Criminal proceedings take approximately one year from filing the motion for prosecution to receiving the court’s decision.

Limitation period

What is the limitation period for filing an infringement action?

According to the Industrial Property Law, the limitation period for trademark infringement claims is three years. The period concerned runs, separately in respect of each individual infringement, from the date on which the rights holder learned of the infringement and the infringing person. However, in any case, claims will become barred by prescription five years from the date on which the infringement occurred.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Depending on the case, trial preparation may be costly, especially if a consumer survey is involved. Such evidence helps to prove association between trademarks among consumers or risk of confusion. Although such evidence will be viewed as part of the plaintiff’s arguments, it can be helpful.

It is difficult to give a cost estimation for first-instance trials, as it will depend on the complexity of the case, the activity of the defender, the number of hearings and the evidence to be submitted. On average, first-instance proceedings cost approximately Zl100,000 (€25,000), without official fees.

Appeals are cheaper because preparation and attendance are usually combined into one hearing. Depending on the complexity of the case, the costs to be envisaged are approximately Zl10,000 to Zl15,000.

Appeals

What avenues of appeal are available?

A losing party can appeal within two weeks of receiving a decision and the justification. Appeals are submitted to the court which issued the decision being challenged.

The appeals court will examine whether the first-instance court made any procedural or substantial errors. Depending on the situation, the appeals court can return the case to the first-instance court for reconsideration or issue a reformative decision.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The law provides for various types of defence, such as prior use rights, the exhaustion of trademark rights or the use of a trademark only for information purposes. These are classic examples of limitations of exclusive trademark rights.

Polish law expressly states that a plaintiff must use its trademark in the course of trade in order to prohibit others from using it. Further, the defendant can demand that the plaintiff submit evidence that it has been genuinely using the trademark in the five years preceding the lawsuit.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies available to trademark owners in case of infringement are listed in the Industrial Property Law. They can be divided into financial and non-financial remedies (but are undoubtedly pecuniary).

As regards non-financial remedies, rights holders often demand that an infringer cease the infringement or surrender any unlawfully obtained benefits. If the infringement is culpable, the rights holder may also demand that the damages be remedied:   

in accordance with the general principles of the Civil Code, according to which the plaintiff should prove the infringement, the actual damage caused and the link between the infringer’s actions and the damage; orby paying a sum corresponding to the licence fee or other relevant remuneration that, when claimed, would have been due and payable to the rights holder for consenting to the mark being used (a form of lump-sum damage). Rights holders tend to prefer this option as they need not provide any proof as in the above case. A court-appointed expert is usually engaged to determine the sum of such damage.

As regards financial damages, judges have some discretion under the general rules of the Civil Procedure Code, especially if a trademark owner opts for the first option above. Accordingly, if the court in a redress action decides that it is impossible or extremely difficult to prove the amount claimed, it may award an amount calculated in view of the facts of the case.

The courts can also adjudicate, on a rights holder's request, that all or part of a judgment or information on an infringement be communicated to the public in the manner and scope specified by the court.

Trademark owners can demand reimbursement of legal costs, along with attorney’s fees. In practice, the sum awarded by the court is rarely as high as the actual costs borne by the winning party.  

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Out-of-court negotiations are possible at every stage of court proceedings. Changes introduced to the Civil Procedure Code in 2016 show that mediation has become increasingly important.

First, when bringing a lawsuit, the claimant must advise whether the parties have attempted mediation or used other ADR methods or, if no such attempt has been made, the reasons for failing to do so. Once the lawsuit is brought before the court, the defendant will have formal opportunities to request mediation (eg, in response to the lawsuit). However, claimants can refuse such a request.

According to the Civil Procedure Code, the courts may refer parties to mediation at any stage of proceedings. A mediation referral order may be issued during an ‘in camera’ hearing. Mediation cannot be conducted if the party does not consent thereto within one week of the mediation referral order being announced or served.

In practice, the courts often issue a referral order after a lawsuit is brought but before the first hearing. To this end, the judge may summon the parties to attend an in camera hearing in person if it is necessary to hear them. Each party has a right to refuse mediation. Further, the judge may invite the parties to attend an information meeting about ADR methods – in particular, mediation.

In addition, during the hearing the court must inform the parties of their option to amicably resolve a dispute, particularly through mediation.

Law stated date

Correct on

Give the date on which the information above is accurate.

24 November 2019.