Following the adoption of a new procedural code in Slovakia in 2015, it has been disputed whether it is possible for a court to issue an injunction in preliminary proceedings concerning intellectual property disputes which would have permanent effect.

Prior to 2015, there had been no possibility for a court to issue an injunction without automatically ordering a claimant to bring a legal action against the defendant (usually within 30 days after issuing the injunction). If the claimant failed to bring a legal action, the preliminary injunction granted ceased to exist.

In 2015, however, the new procedural code introduced a possibility to issue permanent injunctions even in preliminary proceedings. Despite the fact that the new procedural code explicitly excluded a possibility to issue such injunctions with permanent effects in intellectual property disputes, in a number of cases permanent trade mark injunctions were issued in preliminary proceedings.

In those cases, it was enough for a claimant to succeed at preliminary proceedings and obtain a permanent injunction against the opponent. No further trial on merits was needed. Now, such practice of district courts has been strongly denounced by the Supreme Court of Slovakia.

Facts of the case

A court of first instance in Slovakia issued a permanent injunction ordering the defendant to refrain from all acts to be performed in the name or on behalf of the claimant, in particular in relation to the company's registered trade marks and trade mark rights. The injunction was issued in the course of preliminary proceedings.

In making this decision, the court was of the opinion that there was sufficient evidence provided by the claimant to show real urgency of the matter and consequently granted the requested injunction. The judgment pointed out that, despite the fact that the defendant had been dismissed from his position as a director, he signed a contract intending to transfer the claimant's trade marks to the second defendant which ultimately would have caused irreversible damage to the claimant.

The Court of Appeal upheld the first instance decision. The defendant then filed an extraordinary appeal with the Supreme Court of Slovakia arguing that the Court of Appeal did not consider to be relevant his objection concerning inadequate reasoning of the ruling of the court of first instance. He claimed that his right to a fair trial had been breached (since he did not have a chance to argue his case in a standard trial on the merits).

Supreme Court ruling

The Supreme Court confirmed that the defendant was able to file an extraordinary appeal. After examining the case, the Supreme Court reversed the lower courts' rulings. While doing so, the Supreme Court declared that an extraordinary appeal is available in all cases where the appellate court gave a ruling on an appeal concerning permanent injunctions issued in preliminary proceedings.

At the same time, the Supreme Court clarified and ruled that when injunctions concerning intellectual property rights are issued, the court must order the claimant to initiate a court action within a certain period of time after issuance of the injunction. If the claimant does not file a legal action, the injunction will expiry.

Practical consequences

In this very important decision, the Supreme Court clarified that there are no legal grounds for issuing a permanent injunction in preliminary proceedings concerning cases involving intellectual property rights. If a claimant asks for an injunction in cases involving intellectual property rights in preliminary proceedings, the court may issue only a preliminary injunction and the claimant must be given a deadline for filing a legal action (usually 30 days). Once the legal action is filed a trial on the merits will follow. Only once the trial on the merits is duly completed can the court issue a permanent injunction.

Apart from that, the Supreme Court held that the court of first instance as well as the Court of Appeal by their actions did not allow for the defendant to exercise his right to a fair trial. The court stated that whenever such serious procedural misconduct occurs, an extraordinary appeal will be considered to be reasonable and will be allowed.

In conclusion, this case provides that an extraordinary appeal to the Supreme Court is admissible when appealing cases against permanent injunctions issued in preliminary proceedings. Since the court of first instance as well as the Court of Appeal in this case dealt with the issue of intellectual property rights, the Supreme Court had accepted the appeal, heard the case and reversed the prior decisions.